Technology Properties Limited LLC v. Huawei Technologies Co., Ltd. (Supreme Court 2019)
In its new petition for writ of certiorari, Tech. Properties focuses on claim construction and the Federal Circuit’s application of prosecution history disclaimer.
Whether the United States Court of Appeals for the Federal Circuit’s development and application of the doctrine of “prosecution history disclaimer” is consistent with fundamental principles of separation of powers, the Patent Act, and long-established Supreme Court precedent.
The patent at issue here (5,809,336) stems from a 1989 application and a divisional filed just before the 1995 change-over to the 20-year-from-filing patent term. The microprocessor system claims require an “oscillator.” In interpreting that limitation, the court added some additional negative limitations that (1) the oscillator “does not require a command input to change the clock frequency” and (2) the oscillator’s frequency “is not fixed by any external crystal.” The addition was based upon arguments that the patentee made during prosecution. That narrowing, the patentee argues “runs afoul of the separation of powers among Congress, the USPTO, and the federal courts embodied in the Patent Act.”
The most interesting aspect of the petition here is reliance on so many 19th century decisions by the Supreme Court:
- Keystone Bridge Co. v. Phoenix Iron Co., 95 U.S. 274 (1877) (The Patent Act of 1836 “relieving the courts from the duty of ascertaining the exact invention of the patentee by inference and conjecture. . . . This duty is now cast upon the Patent Office. There his claim is, or is supposed to be, examined, scrutinized,
limited, and made to conform to what he is entitled to.”)
- Merrill v. Yeomans, 94 U.S. 568 (1876) (claims are of primary importance).
- Goodyear Dental Vulcanite Co. v. Davis, 102 U.S. 222 (1880) (prosecution history cannot “enlarge, diminish, or vary” the claim limitations).
- White v. Dunbar, 119 U.S. 47 (1886) (“unjust to the public, as well as an evasion of the law, to construe it in a manner different from the plain import of its terms”).
- McCarty v. Lehigh Val. R. Co., 160 U.S. 110 (1895) (“[I]f we once begin to include elements not mentioned in the claim, in order to limit such claim, . . . we should never know where to stop.”).
Of course, the petition also includes the mystery statement: “While the prosecution history can play some role in claim construction, it should not be used to diminish or enlarge the scope of the claims.” What is this mystery role?