Essential Elements and Universal Features Constitute Disavowal of Claim Scope: Federal Circuit | Practical Law

Essential Elements and Universal Features Constitute Disavowal of Claim Scope: Federal Circuit | Practical Law

In X2Y Attenuators, LLC v. ITC, the US Court of Appeals for the Federal Circuit affirmed the ITC's claim construction and final determination of non-infringement because the asserted patents' reference to "an essential element" and a "universal" feature constituted a clear and umistakable disavowal of claim scope.

Essential Elements and Universal Features Constitute Disavowal of Claim Scope: Federal Circuit

by Practical Law Intellectual Property & Technology
Published on 08 Jul 2014 • USA (National/Federal)
In X2Y Attenuators, LLC v. ITC, the US Court of Appeals for the Federal Circuit affirmed the ITC's claim construction and final determination of non-infringement because the asserted patents' reference to "an essential element" and a "universal" feature constituted a clear and umistakable disavowal of claim scope.
On July 7, 2014, in X2Y Attenuators, LLC v. ITC, the US Court of Appeals for the Federal Circuit affirmed the US International Trade Commission's (ITC) claim construction and resulting non-infringement determination on the basis of a clear and unmistakable disavowal of claim scope (No. 2013-1340, (Fed. Cir. July 7, 2014)).
X2Y filed a complaint in the ITC alleging that Intel Corp. and others unlawfully imported microprocessor products that infringe three of its patents directed to structures for reducing electromagnetic interference in electrical currents. The ITC construed the disputed electrode terms to be limited to a sandwich configuration on the basis of specification disavowal. X2Y conceded non-infringement under the ITC's construction and appealed the determination.
The Federal Circuit concluded that there was a clear and unmistakable disavowal of claim scope because the asserted patents included statements that the sandwich electrode configuration was:
  • Universal to all embodiments.
  • An essential element to all embodiments or connotations of the invention.
The court concluded that this language demonstrated a clear intention to limit the claim scope and affirmed the ITC's claim construction and non-infringement determination.
X2Y argued that some of the disavowal language was not applicable because it appeared only in priority patents to the asserted patents. The Federal Circuit rejected this argument because:
  • One asserted patent included the essential element language.
  • One asserted patent incorporated by reference a priority patent that included the essential element language.
  • Two asserted patents incorporated by reference a priority patent that included the universal feature language.
The court concluded that the incorporated patents are effectively a part of the asserted patents as if the disavowal language were explicit in the asserted patents. Although the court explained that a priority patents' disavowal may not always constitute a disavowal when placed in the context of the host patent's disclosure, the court concluded that the asserted patents' teachings were not sufficient to overcome the clear disavowals in the priority patents.