Prosecution History of Related Patents Did Not Disclaim Scope Where Language at Issue Differed

Case: Ventana Med. Sys., Inc. v. Biogenex Labs., Inc., No. 06-1074 (Fed. Cir. 12/29/06)

The One Sentence Summary: The district court erred in claim construction by importing limits from preferred embodiments and by finding prosecution history estoppel from the history of related patents with different claim language.


What They Were Fighting About: Plaintiff held patents for slide staining. After the district court construed the term "dispensing", the parties stipulated to non-infringement, and plaintiff appealed.

Federal Circuit Holdings:

• The district court improperly construed the claim language "dispensing" to mean direct dispensing without intermediate devices.
• The specification did not disclaim "sip and spit" dispensers by including one in the discussion of prior art devices. General statements in the background about the advantages of the invention over the prior art were not a disclaimer of all features of the prior art.
• The claims could not be limited to the preferred embodiments.
• Each claim did not need to include each advantage of the embodiments shown in the specification.
• Prosecution history disclaimer from a predecessor application did not apply to different language used in a subsequent application.
• From the prosecution history, the examiner understood that the term dispensing was more broad than the direct dispensing shown in the specification.
• Prosecution history statements from a continuation application can inform the meaning of an earlier patent, but in this case the language used in the continuation was more limited than the term "dispensing" used in the claims at issue.
• The filing of a terminal disclaimer did not create an estoppel that the scope of the claims was the same as the continuation.