Federal Circuit Finds That Arguments Made When Traversing A Restriction Requirement Can Constitute Prosecution Disclaimer

Uship Intellectual Properties

Addressing the issue of prosecution disclaimer, the U.S. Court of Appeals for the Federal Circuit affirmed the lower court's claim construction ruling, finding that arguments made during prosecution to traverse a restriction requirement amounted to a clear and unmistakable disavowal of claim scope. Uship Intellectual Properties, LLC v. U.S., Case No. 12-5077 (Fed. Cir., May 8, 2013) (Moore, J.).

Plaintiff Uship appealed a ruling of the trial court finding no infringement of two related patents owned by Uship. The patents are directed to systems and methods of processing packages for shipment. The preamble of the claims recited a "method of mailing parcels and envelopes using an automated shipping machine," including the claimed step of "validating receipt of said parcel." The central issue on appeal was whether the scope of the claimed "validating" step only covers the step being carried out by an automated shipping machine or whether