More on Prosecution Disclaimer

By Dennis Crouch

Arendi v. Google (Fed. Cir. 2018)

In its petition for inter partes review (IPR), Google argued the obviousness of all 79 claims of Arendi’s of U.S. Patent No. 6,323,853. The PTAB granted the petition (acting on behalf of the PTO Director) and issued a final decision cancelling the claims. In its decision, the PTAB followed a common district court practice of issuing alternative reasons for its judgment – holding that (1) its preferred broad claim construction rendered the claims invalid; but (2) the claims would still be invalid under a more narrow construction. On appeal, the Federal Circuit disagreed with the broad construction, but agreed with the alternative reasoning – thus affirming the obviousness holding.

One Click Substitutes: Arendi’s patent claims a process for substituting information (such as a name or address) in a document based upon a single user command. Basically, following user activation, the program will look for a first bit of information within the document – such as a name in a <NAME> field. A database is then used to lookup related information to fill other fields in the document, such as an <ADDRESS> field. The program might also update the original <NAME> field fit the formal version found in the db.

Prosecution Disclaimer: During prosecution, the claims were particularly amended to require operation “upon a single entry of the execute command by means of the input device.” In order to over come prior art, the patentee distinguished the TSO prior art reference based upon the fact that TSO required a user to select a text string while Arendi’s amended claims did “not require the user to select a text string [but] functions automatically upon a single click.” The examiner included that distinguishing point in the reasons for allowance.

During the IPR, however, the PTAB found that (1) the claims to not expressly exclude typing-in a text string; and (2) the statements by the patentee during prosecution were not sufficient to rise to a prosecution disclaimer that would narrow the claim scope; and (3) the examiner’s reasons for allowance are essentially immaterial because prosecution disclaimer is based upon applicant statements, not examiner statements.

On appeal, the Federal Circuit found “clear and unmistakable” surrender of subject matter – the requirement for prosecution disclaimer under cases such as Middleton, Inc. v. 3M, 311 F.3d 1384 (Fed. Cir. 2002); Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314 (Fed. Cir. 2003), Innova/Pure Water, Inc. v. Safari Water Filtration System, Inc., 381 F.3d 1111 (Fed. Cir. 2004); and Sorensen v. Int’l Trade Comm’n, 427 F.3d 1375, 1379 (Fed. Cir. 2005).

Not so easy in My View: I do not see this case as quite so easy as the Federal Circuit made-out. In particular, the patent applicant never stated or argued (on record) that its invention excluded the manual selection of text, but rather stated that “the present invention does not require the user to select a text.”  Ordinarily, an argument that a claim does not “require” a particular action is seen as a far-cry and treated quite differently from a statement that a claim “does not cover” or “disclaims coverage over” that action.  The “comprising” transition language used by the claim further builds upon this argument that no disclaimer took place.

In any event, the holding is that the scope was disclaimed and thus the first portion of the PTAB decision was rejected.

As mentioned above, the PTAB offered its decision in the alternative – and the Federal Circuit agreed with the second reason.  The claims are obvious under the second analysis since a prior art reference (Goodhand) performs “essentially the same textual analysis” and does not require the user text selection.

In sum, the PTAB found that Goodhand shows all of claim 1’s limitations, when giving effect to the prosecution disclaimer and limiting the scope of the “single entry” command. This finding is supported by substantial evidence. On the PTAB’s findings, the alternative conclusion of unpatentability on the ground of obviousness in view of Goodhand is sustained.

Claim Cancellation Affirmed


38 thoughts on “More on Prosecution Disclaimer

  1. 2

    The whole litigation is a farce, based on a farce of a patent. There is no invention, and no prior art references are needed at all to render these data transactions as obvious to any PHOSITA you care to define.

    Beyond essential obviousness, it’s just another process that results in information consumed by persons- an entirely abstract result that essentially makes infringement out of a form of basic organization of information that the computer and software designers intended the equipment to do when they designed and built the equipment.

    Nothing new or improved in the means of programming or processing data- just a simple concept of mail merge that a fifth-grader could easily understand.

    1. 2.1

      >no prior art references are needed at all to render these data transactions as obvious to any PHOSITA you care to define.

      I know and we should just do away with trials when we just know that someone is guilty of a crime. We don’t need no evidence. We don’t need no procedure.

      Please Martin, if you are going to pretend you are an attorney, try to learn at least something about the law.

      1. 2.1.2

        Night Writer,

        Martin is not – and clearly does not pretend to be – an attorney.

        He is merely someone who feels wronged in that he had an infringement action brought against him and now is a crusader based on his feelings.

        Worse yet, he has adopted much of the blight of Malcolm (as Malcolm too is an anti-patent propagandist).


          He also appears to have a case of the “I could have done that – so you shouldn’t have a patent on it simply because you came up with it first, filed a patent application, and the patent office agreed with you…”


            Martin has always failed to grasp that the “stick” of patent law (of which he was on the receiving end) serves just as much as carrots in promoting progress.

            The best paten system – a strong patent system – has both the carrot and the stick.

            One may always choose not to share by not partaking in the patent system (or even merely publishing); but that choice does – and should – come with the potential that someone else (even later) does also invent and chooses to share, and that – fully justified and with right – later sharing can be enforced against the earlier non-sharing party.

            This concept is simply an axiom of patent law – however any one person may “feel” about it.


              It’s like listening to first year law students complaining about cases because they disagree.

              Sorry folks, the law is the law regardless of how it makes you feel or what it would be if you were king.


                It’s worse than that. At least first year law students realize that they are there to learn about the law and not continue to make things up – like Marty and many of the anti’s.

                1. anon, don’t be ridiculous.

                  How about due process? How about the fourth amendment.

                  What is happening when a cop shots and kills you because you moved your hand is the following:

                  the cop presumes that you are armed and dangerous and that you have heard and understood his orders and are physical capable of complying. Etc. Massive assumptions.

                  All of this violate the Constitution. The cop cannot presume that you are a killer and armed without some evidence and cannot execute you without due process.

                  The life of a cop is worth less (much, much less) than a life of a citizen viewed in terms of the Constitution—not more

                2. LOL – I was confused for a second there Night Writer.

                  Let’s see if the comment count is reset in the morning and continue our discussion there.

                3. Actually, anon, thinking about it overnight, I realized that you should think about the connection with patent law.

                  We should not have our Constitutional rights stomped on just because a cop decides to talk to us. It means you can’t drive or walk without the danger of summary execution by the king/queen.

                4. Night Writer,

                  You have blown this out to a completely unreasonable level.

                  No one is saying anything about the outrageous level of “executing” or “stomping on Constitutional rights.”

                  You remain mired in a confusion and conflation about presumption as opposed to a realization about safety, the relative scope of danger, and the plain fact of the matter that we entrust – even demand that – police officers insert themselves INTO the dangerous places and situations for which their safety is imperiled.

                  You simply speak from a place of ignorance with your refusal to recognize the disparity involved in that job.

                  This has nothing at all to do with patent law. Nothing.
                  This has everything to do with compensating for a minimum level of personal safety for a real life person doing an inherently dangerous job.

                  This has nothing to do with the possible abuses of those placed in that dangerous job, using – or more to the point, MISusing and abusing what otherwise is a just , right and reasonable safety measure. As I mentioned on the other thread, if you want to talk about severe penalties for the ABuse and MISuse, I am all ears. If you want to prattle on as if the danger is not real and that we as a society are asking individuals of our society to place themselves into a personal danger zone, I will – of course – push back.


            A child could have done that. That’s a wee problem, literally.

            A consolidated routine is so basic that the term basic does not even do its simplicity justice. There should be no prior art references because nobody would bother to write it down.

            The very first software ever made consolidated routines into hotkeys. Absurd.


              Ah, it is so ubiquitous I can’t find it…

              btw, what is the “very first software?”

              While you are at it, when was the first “hotkey?”


                Ray is right. If it is ubiquitous, then you should be able to find it in the prior art.

                One of the problems with patent law and appointing Google judges to the CAFC is that there some tricky things to learn in patent law. Understanding hindsight is one of them.


              I used to be a product manager. One things I learned quickly was “a child could have done that” is the mantra of the hindsight people.

              I can’t tell you how many times a product would come out and we would look at it and say, how in the world did we not think of that. It is so basic. So, trivial. Once something is done it become trivial.

              Copying a song is trivial. Creating a song is not. Etc.


                I would reflect your post and heighten it to say that those who understand and appreciate innovation (as opposed to those who appreciate the ability to quickly copy) are more inclined to even bother with the effort of understanding patent law.

                Otherwise, the drive is there to NOT understand patent law. The drive is there to merely collect the pablum and koolaid and propaganda that reinforces the feelings that one already has.

                Marty is a prime example of this.
                Ned is another.
                Malcolm gleefully enables this type of anti-innovation.

    2. 2.2

      What bothered me about this case is that the PON, the click, was not considered to be the invention on filing. The invention allowed:

      Perform some computer action after receiving a click.

      Put this way, there is no invention at all given that this form programming is as old as the keyboard or mouse. Perhaps the electric light switch might be good prior art. Perhaps the trigger on a gun. Perhaps the release bolt from a catapult in response to pull on a trigger. Etc., etc., etc.

      Really, PTO. Really?

      1. 2.2.1


        Really Ned, really?

        “invention” is not limited to some parsed PON.

        Time for you to accept the Act of 1952.

    3. 2.3

      no prior art references are needed at all to render these data transactions as obvious

      Not how the law works.

      Never has been how the law works.

  2. 1

    Distinguishing prior art + amending claims in support of this distinguishing feature + examiner accepting the statement – without any statement saying the examiner’s statements or interview summaries are incorrect = disclaimer all day long in Dct.Ct.

    Respectfully, I disagree with the author’s comments that the Fed.Cir. view wasn’t an easy call. Instead, I find it remarkable that the PTAB continues to not give credit for the prosecution history when interpreting the claims.

    It seems the PTAB generally interprets BRI as meaning that you completely ignore the specification and prosecution history when considering the scope of a claim. Perhaps this case will help reset that understanding.

    1. 1.1

      In my view, I believe the author is correct. Claims sets forth the limits and boundaries of the claimed invention. Here I believe the federal circuit read in a negative limitation: the claimed invention cannot further include a user selecting text for any reason. I agreed with the author here. While I agree that the phrase “single entry of the execute command” cannot itself be a user selecting text in view of the prosecution history and spec (BRI), this does not mean that the claimed invention cannot cover both. In other words, a process that includes both a single entry of an execute command and a user selecting text should be covered by the claim as the claim requires at least a single entry command. In my view, the federal circuit has altered the claim to read “upon a single entry of the execute command by means of the input device and without a selection of text by a user.”

      1. 1.1.1

        Without the prosecution history, I would agree. However, while it may not be a preferred claim drafting technique, negative limitations are allowed and are often the result of prosecution disclaimers.

        While this benefited the patent owner in this case, reviewing defendant’s Markman briefs, one may think it would be malpractice not to make this exact same argument.

      2. 1.1.2

        While I agree that the phrase “single entry of the execute command” cannot itself be a user selecting text in view of the prosecution history and spec (BRI), this does not mean that the claimed invention cannot cover both.

        That is exactly what it means.

        Claims must be read in light of the specification and prosecution history. That’s the entire point here. It was not the federal circuit that altered the claim – that happened during prosecution.


          anon – do any of these people litigate patents?

          Alleging infringement with such amendments coupled with the disclaimers against a product that doesn’t have them is a tasty recipe for sanctions…


            One need not get to the litigation stage (or have experience thereof) to understand the situation here.


          In light of the prosecution history disclaimer?

          You don’t read claims in a vacuum.

          When a patentee starts making disclaimers in prosecution regarding a particular claim element and what the element is and is not – the specific language of the claim is rather meaningless – the element will be construed by a Court and most of the time the Court is going to hold the patentee to their disclaimer.

          Trying to make sense of a ruling while ignoring the disclaimer is a silly exercise imo.

    2. 1.2

      The PTAB uses the BRI, which is the broadest reasonable interpretation in view of the specification (and not the broadest reasonable interpretation in view of the prosecution history). Examiners and the PTAB usually ignore the prosecution history. I wonder what the CAFC had in mind to decide that the PTAB needs to look at the prosecution history for interpreting claims during IPRs. Could it be a recognition that BRI does not make sense in the context of IPRs?

      1. 1.2.1


        I think that you take a too narrow view of the place of prosecution history in BRI.

        The very nature of BRI involves that same prosecution history and is not separable from it.

        See link to

        To attempt to divorce the prosecution from the acts of prosecution (based on a snippet that does not include the words “and prosecution”) is a far too crabbed view of WHY the BRI is being employed in the first place. The snippet you use is indeed correct – as a starting point – but NOT correct as an ending point, as you would eliminate the fruit of the efforts itself.


          Well, it seems the CAFC believes you should consider the prosecution history – especially disclaimers – within the consideration of BRI…


            That’s rather the whole point of BRI – indeed, it is not comprehensible that you would eliminate the very reason FOR BRI (to create in part the very prosecution record) as a consideration in understanding the claimed invention.


            That will be a big change for the PTAB, and more confusion about what distinguishes Court interpretation based on Phillips and BRI.


              How do you figure that BRI incorporating (properly) to include the results of the exchange FOR WHICH BRI exists to create “more confusion

              If anything, this should reduce confusion.

    3. 1.3

      Ray, thanks for your comment. What would you say if we changed the fact pattern a bit to coincide with one that is consistent with accelerated examination:

      So instead of:
      Distinguishing prior art + amending claims in support of this distinguishing feature + examiner accepting the statement – without any statement saying the examiner’s statements or interview summaries are incorrect = disclaimer all day long in Dct.Ct.

      You’d have:
      Claims refined during preparation of AE petition and prior to filing (but assume no need for post filing amendments) + statements made in AESD to distinguish prior art + examiner accepting the statement – without any statement saying the examiner’s statements or interview summaries are incorrect = ?

      With the understanding that these questions are based on the assumptions that (1) the refined claims are in the same condition as the amended claims and (2) the prior art found by the Examiner would have been addressed in the AESD:
      – would you still have some degree of disclaimer owing to the statements in the AESD?
      – how would that disclaimer be affected by the lack of narrowing amendments?
      – would the patentee have been in a materially better position had he used AE to obtain his patent?

Comments are closed.