As
fall
Fridays
go,
the
one
last
week
was
pretty
eventful,
at
least
for
patent
types.
While
I
will
let
the
proverbial
dust
settle
for
a
bit
on
the
big
news
out
of
the
USPTO
regarding
changes
to
the
IPR
scheme,
there
is
no
doubt
that
seismic
change
is
afoot.
The
fallout
promises
to
impact
everyone
up
and
down
the
patent
ecosystem’s
food
chain,
from
patent
owners,
to
defendants,
and
the
entire
universe
of
vendors,
funders,
and
counsel
that
has
been
developed
over
the
past
decade
to
deal
with
parallel
litigation
in
patent
cases
between
district
courts
and
the
USPTO’s
PTAB.
But
there
will
be
plenty
of
time
to
see
what
changes
going
forward,
even
as
the
heads
of
many
have
already
been
spinning
for
much
of
this
year
based
on
the
implementation
of
a
more
robust
discretionary
denial
gauntlet
for
IPR
petitioners
to
navigate
through.
Instead,
it
is
worthwhile
to
use
this
week’s
column
to
discuss
another
of
Friday’s
developments,
a
Federal
Circuit
precedential
opinion
that
provides
a
potent
reminder
of
the
importance
of
patent
owners
and
their
counsel
watching
their
words
—
at
least
if
they
want
to
avoid
limiting
their
patent
scope
and
value
via
prosecution
disclaimer.
The
case
in
question,
Barrette
Outdoor
v.
Fortress
Iron,
came
to
the
Federal
Circuit
out
of
the
Northern
District
of
Texas
after
a
claim
construction
ruling
that
the
plaintiff
agreed
made
it
impossible
to
prove
their
case
of
infringement.
As
a
result
of
that
stipulation,
the
district
court
entered
a
final
judgment
of
no
infringement
of
any
of
Barrette’s
four
asserted
patents,
with
Barrette
appealing
that
judgment
to
the
Federal
Circuit.
Unsurprisingly,
the
defendants
cross-appealed
to
push
forward
their
rejected
indefiniteness
defense,
because
nothing
is
sweeter
than
getting
out
of
a
patent
case
for
a
defendant
than
killing
the
patents
that
had
caused
the
trouble
to
begin
with.
On
appeal,
the
panel
concluded
that
the
district
court
was
right
in
entering
judgment
of
noninfringement,
and
rejected
the
cross-appeal
that
the
patents
were
indefinite.
A
win
for
the
defendant,
but
at
least
the
patents
survive
for
the
plaintiff
to
continue
playing
with.
(As
always,
for
those
interested
in
a
learned
analysis
of
the
opinion,
I
commend
Prof.
Crouch’s
write-up
on
Patently-O,
available
in
full
to
subscribers
of
his
worthy
publication.)
For
our
purposes,
the
salient
question
is
why
the
Federal
Circuit
chose
to
make
this
dispute
over
lawn
fence
technology
the
basis
for
a
precedential
opinion.
The
short
answer
is
that
claim
construction
as
a
matter
of
law
is
always
important
–
and
likely
to
generate
precedential
guidance
that
governs
future
similar
proceedings.
Let’s
go
a
bit
deeper
to
try
and
tease
out
what
guidance
the
panel
is
offering
to
us
going
forward.
To
start,
all
of
the
asserted
patents
“share
a
common
specification
and
parent
application,”
which
“describes
a
fencing
assembly
featuring
pivoting,
sliding
connectors
that
connect
pickets
to
rails.”
At
the
heart
of
the
inventions
was
an
improved
connector
that
offered
advantages
over
the
prior
art
fencing
assembly
methods
previously
available.
After
getting
a
few
patents
issued,
Barrette’s
continuing
prosecution
efforts
hit
a
roadblock
when
an
examiner
found
a
prior
art
reference
that
allegedly
disclosed
Barrette’s
connector.
As
a
result,
Barrette
tried
to
distinguish
over
that
reference,
before
cutting
bait
and
substituting
in
narrower
claims
that
led
to
another
patent
issuance
when
that
effort
failed.
Eventually,
Barrette
identified
what
it
thought
was
infringement
by
the
defendants
and
filed
suit.
The
case
went
to
a
claim
construction
hearing,
where
Barrette
argued
for
broad
constructions
of
the
disputed
patent
claims.
In
response,
the
defendants
argued
that
the
claims
were
indefinite
with
respect
to
“the
sliding
terms”
while
also
arguing
that
the
“term
“boss”
should
be
construed
as
limited
to
integral,
fastener-less
structures.”
And
because
the
parties
agreed
“
that
the
terms
‘boss,’
‘projection,’
and
‘nub’
are
used
interchangeably,”
once
the
district
court
“
limited
the
“boss”
terms
to
integral
structures
by
distinguishing
the
“claimed
integral
bosses”
from
the
“conventional
pivot
hole
and
pivot
pin
assembly”
disclosed”
in
the
prior
art,
it
was
game
over
for
Barrette’s
infringement
case.
On
appeal,
the
Federal
Circuit
agreed
that
the
district
court
got
some
elements
of
claim
construction
wrong,
but
refused
to
disturb
the
construction
limiting
“boss”
to
“integral
structures”
based
on
the
disclaimer
over
the
prior
art
in
prosecution.
Accordingly,
the
judgment
of
noninfringement
was
affirmed.
In
doing
so,
the
panel
rejected
Barrette’s
argument
that
its
alleged
prosecution
disclaimer
could
not
apply
to
earlier
issued
patents
than
the
patent
in
which
the
alleged
disclaimers
were
made.
In
the
panel’s
view
the
situation
presented
here
was
one
where
the
disclaimer
clarifying
a
more
limited
claim
scope
was
clear
—
with
Barrette’s
argument
really
one
that
“subsequent
communications
with
the
patent
office
rendered
any
purported
disclaimer
ambiguous.”
In
light
of
that
posture,
the
panel
found
that
the
“prosecution
history
would
not
suggest
to
a
reasonable
reader
that
Barrette’s
narrowing
characterization
of
its
claims
was
incorrect.” Nor
could
Barrette’s
cancellation
of
the
claims
at
issue
prevent
the
disclaimer
because
Barrette
never
rescinded
the
disclaimer
before
the
examiner.
Finally,
just
because
the
disclaimer
was
made
in
a
later-issued
patent’s
prosecution
was
not
enough
to
save
it
from
applying
to
earlier
familiar
members,
based
on
earlier
Federal
Circuit
precedent
that
when
terms
are
shared
across
patents,
statements
about
the
scope
of
those
terms
apply,
“regardless
of
whether
the
statement
pre-
or
post-dates
the
issuance
of
the
particular
patent
at
issue.”
Ultimately,
the
Barrette
decision
confirms
the
importance
of
considering
the
prosecution
history
of
all
related
patents
when
determining
how
best
to
assert
or
defend
against
a
patent
infringement
claim
at
the
claim
construction
stage.
In
a
way,
it
reminds
us
that
a
patent
owner’s
statements
about
the
scope
of
its
patents
must
always
be
considered
carefully
–
with
narrowing
statements
deserving
of
extreme
scrutiny
by
patent
owners
before
they
are
made
if
at
all
possible.
Conversely,
defendants
must
make
sure
that
they
scour
the
prosecution
histories
of
related
patents
to
find
any
limiting
statements
that
can
apply
to
common
terms.
More
work
for
everyone,
but
an
important
reminder
to
all
involved
of
the
importance
of
watching
one’s
words.
Please
feel
free
to
send
comments
or
questions
to
me
at
[email protected]
or
via
Twitter:
@gkroub.
Any
topic
suggestions
or
thoughts
are
most
welcome.
Gaston
Kroub
lives
in
Brooklyn
and
is
a
founding
partner
of Kroub,
Silbersher
&
Kolmykov
PLLC,
an
intellectual
property
litigation
boutique,
and Markman
Advisors
LLC,
a
leading
consultancy
on
patent
issues
for
the
investment
community.
Gaston’s
practice
focuses
on
intellectual
property
litigation
and
related
counseling,
with
a
strong
focus
on
patent
matters.
You
can
reach
him
at [email protected] or
follow
him
on
Twitter: @gkroub.