Avoiding and Utilizing Prosecution History in Litigation, Prosecution, and Due Diligence

Hosted By: Intellectual Property Owners Association

Prosecution history is sometimes overlooked when valuing a patent, but some commentators would say it’s nearly impossible to overestimate the role it can play in litigation.

This summer the Federal Circuit issued a precedential decision in Blackbird Tech v. ELB Electronics, which vacated an earlier judgment of non-infringement of a lighting technology patent asserted by Blackbird. The Federal Circuit determined that the district court had erred in construing the claim term “attachment surface” in finding non-infringement. A claim amendment made during patent prosecution played a prominent part in the appellate court’s decision.

Further, life science litigation involving broad patents can often find a patent owner boxed in by the need to meet Section 112 requirements in prosecution. The scope of disclaimers can also be dispositive in high-tech litigation such as Avid Tech., Inc. v. Harmonic, Inc., which cen​tered on digital data storage.

This webinar will look at the nature of legal traps that can lurk in prosecution history, caused both by disclaimers and amendments, and how they can snare defendants or plaintiffs in infringement litigation. It features attorneys with a wide array of experience related to these issues, including panelists who recently won cases for their clients by exploiting prosecution history. They will provide tips for patent prosecutors on how to try to avoid leaving damaging history — and for transactional lawyers on how to spot problems during due diligence that could turn the patent into a lemon for a purchaser.​


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