Yesterday, in Uship Intellectual Props., LLC v. United States, the Federal Circuit issued a decision liberally applying the doctrine of “prosecution disclaimer.” The Court held that disclaimers in the prosecution history are not just limited to situations where an applicant makes arguments in response to claim rejections, but can be applied in other situations, such as arguments traversing restriction requirements. Prosecution disclaimers are one way in which the scope of a claim term can be narrowed as compared to the term’s “ordinary meaning in the context of the written description and prosecution history.” Philips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). As the Federal Circuit noted “[t]here are only two exceptions to [the general rule that claims are construed in the context of the written description and the prosecution history]: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Opinion at 4 (quoting Thorner v. Sony Computer Entm’t Am., LLC, 669 F.3d 1362, 1365 (Fed.Cir. 2012)). At issue in this case was whether a certain step in a patent claim was limited to being carried out by an automated shipping machine. Opinion at 3. During prosecution of the patent-at-issue, the patent examiner required the applicant to restrict the invention to either the pending method or apparatus claims, because they covered two distinct inventions. Id. at 5. The applicant traversed the restriction requirement by arguing that “all of the claims were drawn to a single invention because the method claims ‘use an automated shipping machine as set forth in the preamble.'” Id. Uship argued that the plain language of the claims at issue did not limit performance of the step to a machine, indicating that the specification even disclosed an embodiment where a human performed the disputed step. Id. at 4. And further, that the prosecution history did not trump the specification because a “response to restriction requirement cannot give rise to prosecution disclaimer.” Id. at 5. The government and IBM responded that the “language and context of the preamble [including reference to a machine] raise a ‘strong presumption’ that...
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