If the applicant makes an argument that his claim is distinguishable from the prior art during patent prosecution, that claim is to be interpreted the same way during litigation.
Such was the case in Technology Properties Ltd. v. Huawei Technologies Co., Ltd. (Fed. Cir. 2017). In the first example, the patentees had earlier argued that their oscillator "oscillate[d] without external components." During litigation, however, they realized they could distinguish their invention from the prior art by making a different argument that would have been much less restrictive in claim scope. However, the district court ruled that: "we hold the patentees to the actual arguments made, not the arguments that could have been made." Thus, even if their earlier arguments were unduly limiting, the district court ruled that they were bound by them. The Federal Circuit affirmed.
In a second example from the same case, the patentees had earlier argued that their claimed oscillator did not require a control signal to set the clock frequency of the CPU. However, the district court treated this argument essentially as the claimed oscillator did not require a control signal for any purpose at all. The Federal Circuit reversed, finding that the patentees did not make a prosecution disclaimer that was nearly as narrowing as the district court had found.
More information on this case can be found here:
https://www.globalipmatters.com/2017/03/16/federal-circuit-reiterates-that-patent-prosecution-disclaimers-must-be-clear-and-unmistakable#page=1
Such was the case in Technology Properties Ltd. v. Huawei Technologies Co., Ltd. (Fed. Cir. 2017). In the first example, the patentees had earlier argued that their oscillator "oscillate[d] without external components." During litigation, however, they realized they could distinguish their invention from the prior art by making a different argument that would have been much less restrictive in claim scope. However, the district court ruled that: "we hold the patentees to the actual arguments made, not the arguments that could have been made." Thus, even if their earlier arguments were unduly limiting, the district court ruled that they were bound by them. The Federal Circuit affirmed.
In a second example from the same case, the patentees had earlier argued that their claimed oscillator did not require a control signal to set the clock frequency of the CPU. However, the district court treated this argument essentially as the claimed oscillator did not require a control signal for any purpose at all. The Federal Circuit reversed, finding that the patentees did not make a prosecution disclaimer that was nearly as narrowing as the district court had found.
More information on this case can be found here:
https://www.globalipmatters.com/2017/03/16/federal-circuit-reiterates-that-patent-prosecution-disclaimers-must-be-clear-and-unmistakable#page=1
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