a continuation from my prev post.......

Plaintiff's argument that TPL narrowed scope during reexam in order to maintain patent/s:

Plaintiffs‟ construction includes a “wherein” clause that incorporates explicit arguments and disavowals that TPL made during reexamination after Judge Ward‟s claim construction order and after the dismissal of the Texas action. Specifically, in order to overcome a rejection of its claims based on U.S. Patent No. 4,689,581 to Talbot (Chen Decl., Ex. 3), TPL argued that the controlled oscillator (“VCO”) of Talbot did not teach the “ring oscillator” of the patents-in-suit.

The examiner summarized TPL‟s arguments, which were made in an in-person interview, as follows: Continuing, the patent owner further argued that the reference of Talbot does not teach of [sic] a “ring oscillator.” The patent owner discussed features of a ring oscillator, such as being non-controllable, and being variable based on the environment. The patent owner argued that these features distinguish over what Talbot teaches.

In light of TPL‟s disavowing arguments made to the PTO after Judge Ward‟s ruling, the

construction must be adapted to require that the claimed “ring oscillator” be (1) “noncontrollable,” and (2) “variable based on the environment.”

Federal Circuit law is clear that “[a]rguments made during the prosecution of a patent application are given the same weight as claim amendments.” It is also black letter law that a court “cannot construe the claims to cover subject matter broader than that which the patentee itself regarded as comprising its invention and represented to the PTO.” “The purpose of consulting the prosecution history in construing a claim is to „exclude any interpretation that was disclaimed during prosecution.‟ "Accordingly, „where the patentee has unequivocally disavowed a certain meaning to obtain his patent, the doctrine of prosecution disclaimer attaches and narrows the ordinary meaning of the claim congruent with the scope of the surrender.‟”