- Finesse Wireless 24-1039.pdf

• Whether amending claims to recite “three signals” constituted a prosecution-history surrender of implementations with only two unique input signals for the ’775 patent.: Claim amendments do not create prosecution-history disclaimer unless the record shows a clear and unambiguous disavowal; adding “three signals” did not unmistakably surrender systems using two unique inputs where the claim construction required only separately identifiable signals.

- Focus Products 23-1446.pdf

• Prosecution history disclaimer narrowing “ring” to exclude a flat upper edge for ’248 and ’609 patents.: An applicant’s election of a restricted species, combined with acquiescence to the examiner’s repeated withdrawal/cancellation of claims directed to a nonelected species, can amount to clear and unmistakable disavowal of that nonelected claim scope, limiting claim meaning notwithstanding broader ordinary usage.

- Iqris 23-2062.pdf

• Whether “pull cord” excludes a cord that includes a handle and whether prior-art criticism narrows the claim.: Disparagement of prior art narrows claim scope only with clear and unequivocal expressions of exclusion; criticizing prior-art reassembly difficulties did not disclaim pull cords with handles, especially where the figures contemplate a gripping feature.

- Magema Tech. 24-1342.pdf

• (no holding tagged to this category)

- Maquet Cardovascular 23-2045.pdf

• Whether prosecution history of a related patent supports importing a negative limitation into a later claim with different language: Prosecution disclaimer from a related patent prosecution is relevant only when the earlier prosecution addresses a limitation in common with the claim term being construed; material differences in claim language (e.g., claiming an “entire elongate lumen distal to” a component versus a “guide mechanism comprising a lumen”) defeat reliance on that history to import a negative limitation.
• Application of disclaimer based on examiner-requested revisions and applicant acquiescence across related patents: A court may not import a negative limitation into a claim based on an alleged disclaimer tied to different claim limitations in a related patent; “common subject matter” alone is insufficient—disclaimer analysis must remain tethered to the specific claim language being construed.
• Whether silence in response to an examiner’s notice of allowance creates prosecution disclaimer: An applicant’s silence in response to an examiner’s notice of allowance generally does not constitute a clear-and-unmistakable disavowal sufficient for prosecution disclaimer.
• Whether patentee statements in IPR proceedings can create disclaimer, and what level of clarity is required: Statements made by a patent owner in an IPR proceeding may support prosecution disclaimer in claim construction only if they are clear and unmistakable; vague reliance on an examiner’s prior allowance over art, without tying the argument to the specific claim limitation, does not disclaim scope.

- Mondis 23-2117.pdf

• Whether prosecution history/examiner allowance of an amendment provides substantial evidence that the amended claim satisfies § 112(a).: Examiner allowance of amended claims—particularly where the record shows the amendment was accepted to distinguish prior art—does not by itself provide substantial evidence that the specification contains written-description support for the amendment.

- Restem 23-2054.pdf

• Effect of prosecution history on claim scope despite specification lexicography.: Clear examiner statements characterizing the allowed claim scope, coupled with applicant acquiescence during prosecution, can narrow claim scope (here, to a “cell population”), and that narrowed understanding may control over broader specification disclosures/definitions.

- Top Brand 24-2191.pdf

• Whether prosecution history disclaimer can limit the scope of a design patent.: Prosecution history disclaimer applies to design patents: a design patentee may surrender claim scope through unambiguous arguments made to the PTO, and those representations must be given effect in determining claim scope.