In Barrette Outdoor Living, Inc. v. Fortress Iron, LP, Fortress Fence Products LLC (Fed. Cir. October 17, 2025), the Federal Circuit held that additional claim limitations may be applied to claims if other options are explicitly disclaimed in the specification or during prosecution.
Barrette Outdoor Living, Inc (“Barrette”) sued Fortress Iron, LP, Fortress Fence Products LLC (Fortress) alleging infringement of various patents related to a connector having a projection or boss on one side and a sliding surface on the other side, where the boss engages a pivot hole in a picket allowing the picket to be tilted at an angle causing the connector to slide along the rail responsive to movement of the picket. The patents shared a common specification, which noted that prior art connectors that used fasteners were too time consuming to install while the claimed sliding pivotal connection is very easy and fast to install. Further, during prosecution of one of the patents, Barrette argued that a prior art reference discloses “a conventional pivot hole and pivot pin assembly” and not “a slip-together connection with the claimed integral boss”.
The district court found Fortress did not infringe the patents based on its interpretation of the term “boss” from the specification and the prosecution history. The district court determined that the specification identified fastener-less connections as advantageous and disparaged prior art connectors requiring fasteners in order to construe the term “boss” as fastener-less. The district court also limited the term “boss” to an integral boss based on the prosecution history, which distinguished the claimed integral bosses from the conventional pivot hole and pivot pin assembly.
The Federal Circuit affirmed the holding of non-infringement based on the interpretation of the term “boss” as an integral boss, though reversed the district court’s interpretation of the term “boss” as fastener-less. The Federal Circuit held the term “boss” was limited to integral bosses as “Barrette clearly characterized the claimed invention as limited to integral bosses” during prosecution. The Federal Circuit noted disclaimer is not negated by an Examiner’s non-acceptance of an argument or that those claims were subsequently cancelled. The Federal Circuit also determined that a “statement made during prosecution of related patents may be properly considered in construing a term common to those patents, regardless of whether the statement pre- or post-dates the issuance of the particular patent at issue.” Thus, the Federal Circuit determined that interpretation of the term “boss” applied to all the patents at issue. With respect to the construction of the term “boss” as fastener-less, the Federal Circuit reasoned “the fact that a patent asserts that an invention achieves several objectives does not require that each of the claims be construed as limited to structures that are capable of achieving all of the objectives”.
Author: John Brink
Edited by Craig Drachtman and April Capati
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