Takeaway: Disclaimer can only be found when the specification makes clear that the invention does not include a particular feature.

In its Decision, the Board denied Patent Owner’s Request for Rehearing of the Board’s Decision to Institute covered business method review of claims 33-36, 39-41, 44, and 45 of the ‘960 patent.  According to the Board, Patent Owner had not sustained its burden of showing that the Board’s Decision should be modified.

Patent Owner had asserted that the Board had misapprehended the discussion in the specification of the performance characteristics of the inventive laser line filters.  In this connection, it was Patent Owner’s position that due to claim scope disavowal in the specification, the challenged claims each require thin-film laser line filters that use hard —rather than soft—coating materials.  Patent Owner was thus advocating a narrower claim construction based on the Federal Circuit’s holding inScimed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001).

The Board agreed that Scimed generally stands for the proposition that claim scope may be disclaimed in situations where the specification makes clear that the invention does not include a particular limitation.  But, upon investigation, the Board found that the specification of the ‘960 patent did not “make clear” that the invention was limited to hard coating materials.  As pointed out by the Board in its Decision, the specification discloses that thin-film laser-line filters can be based on either hard or soft coatings, and “it is not clear from the Specification as to how the inventor intends to distinguish one embodiment from all other possible embodiments that may share similar features.”

Travelocity.com L.P., Priceline.com Inc., and Expedia, Inc. v. Cronos Technologies, LLC, CBM2014-00082 
Paper 12: Decision Denying Request for Rehearing 
Dated: October 16, 2014 
Patent 5,664,110
Before: Jennifer S. Bisk, James B. Arpin, and Lynne E. Pettigrew
Written by: Arpin