In Uship Federal Circuit Finds Prosecution History Disclaimer in Arguments Against Restriction Requirement

The Claim Construction Issue

As summarized by the Federal Circuit:

The central issue in this appeal is whether the claimed “validating” step can be carried out only by an automated shipping machine, or whether a human being may perform this step.

 The Claim Language

The Federal Circuit rejected the Appellees’ argument “that the appearance of the phrase ‘using an automated shipping machine’ in the preamble raises a presumption that every step of the claimed method must be performed by a machine.” Rather, the court found that “[t]he plain meaning of ‘using an automated shipping machine’ does not clarify whether the machine must be used in one, several, or all of the steps.” Thus, the court considered intrinsic evidence.

The Specification

While the patents describe methods where the validating step is performed by a machine, they also disclose a “semi-attended” embodiment, where validation is performed by a retail clerk. Ass set forth in the ‘220 patent:

In this embodiment of the invention, information provided by the customer is used to generate an appropriate mailing label which is then applied to the parcel, package or envelope by the customer. The parcel, package or envelope with the label is then provided to a retail clerk who validates receipt of the package and provides an appropriate receipt to the customer. The retail clerk then places the package in an appropriate location for subsequent pick-up by a commercial carrier. The embodiment of FIGS. 20-22 thus differs from the previous embodiments in that it is semi-attended, i.e., a clerk is needed to take the parcel or envelope from the customer, to store the parcel or envelope in a secure storage area, and to validate receipt of the parcel or envelope.

The Federal Circuit found that the specification arguably supports Uship’s claim construction.

The Prosecution History

As noted above, the asserted prosecution history disclaimer arises from statements Uship made in response to a Restriction Requirement. As an initial matter, the Federal Circuit rejected Uship’s arguments that “prosecution disclaimer applies only when applicants attempt to overcome a claim rejection.” Instead, the court noted:

Our cases broadly state that an applicant’s statements to the PTO characterizing its invention may give rise to a prosecution disclaimer.

As characterized by the Federal Circuit, “the examiner required restriction of the method and apparatus claims based on a belief that the method claims could be carried out entirely by hand.” (As set forth in MPEP § 806.05(e) one ground for restricting method and apparatus claims is that the method can be performed with a materially different apparatus or by hand.)

According to the Federal Circuit, “Instead of arguing that the restriction was improper because the claims required that the machine perform at least one of the steps, the applicant stated that the claims ‘specifically recite in the preamble a method of mailing parcels . . . “using an automated shipping machine” rather than specifically reciting at each step that the step is performed by the automated shipping machine.’ Thus, the applicant explicitly represented that reciting ‘using an automated shipping machine’ in the preamble is equivalent to ‘specifically reciting’ that phrase at each step of the method.”

The court noted further:

The fact that the applicant may have given up more than was necessary does not render the disclaimer ambiguous. The analysis focuses on what the applicant said, not on whether the representation was necessary or persuasive.

The court also found relevant the fact that the argument “persuaded the examiner, who noted in the ensuing Office Action that the restriction requirement was overcome.” Thus the court concluded:

From this exchange, a competitor would reasonably conclude that the applicant clearly and unmistakably limited all of the method claim steps to performance by an automated shipping machine except where the claim itself expressly requires an attendant.

The court also explained the prosecution history disclaimer may trump embodiments disclosed in the specification:

 Even if the specification had disclosed an embodiment where a human performed the entirety of the validation step, prosecution disclaimer could result in that embodiment not being covered by the claims.

The court therefore affirmed the Court of Federal Claims’ claim construction and judgment of non-infringement.

Is Traversing a Restriction Requirement Worth the Risk?

When an application with 10 claims faces a 50-way restriction requirement, it is tempting to argue vigorously and pick apart the examiner’s theories as to why the claims are directed to patentably distinct subject matter. This case underscores some of the risks associated with such a strategy, but I also note that traversing a restriction requirement usually is an exercise in futility. Even when the claims plainly recite corresponding subject matter, examiners rarely withdraw restriction requirements. Thus, unless the applicant is prepared to pursue the issue in a petition, the safest and most cost-effective approach may be to respond without traverse, or traverse on the ground that examining the restricted claims together would not impose a significant burden on the examiner.

(Is “prosecution history disclaimer” the new term for “prosecution history estoppel”?)