Federal Circuit Provides Important Refresher On Disavowal Of Claim Scope

In Techtronic Industries Co. Ltd., v. International Trade Commission, No. 2018-2191 (Dec. 12, 2019), the Federal Circuit addressed the issue of whether a patentee’s statement in the specification describing the invention as having a given feature (location of a detector) amounts to disavowal of claim scope with respect to other embodiments (other locations). The Federal Circuit explained “[i]t is axiomatic that, where the specification ‘describes the present invention as having [a] feature’ that representation may disavow contrary embodiments” and also noted that “[a] disavowal must be clear, but it need not explicit.” It then held that “by consistently representing the invention as the placement of the detector in the wall console, [the patentee] has thus effected a disavowal of alternative locations.” It further held that “[w]here, as here, the specification plainly represents the scope of the invention to the exclusion of some embodiments, it is unnecessary that it also concede that those embodiments are ‘infeasible’ or even ‘impossible’ by reference to its teachings.”

The case can be found at http://www.cafc.uscourts.gov/node/25614.