Federal Circuit, May 8, 2013, 2012-5077

In Uship Intellectual Properties v. US, the Federal Circuit affirmed the judgment of the Court of Federal Claims (CFC) that the United States (the government) and IBM Corporation (IBM) do not infringe certain claims of Uship's patents. The issue in the appeal is whether the claimed "validating" step can be carried out only by an automated shipping machine, or whether a human being may perform this step.

During prosecution of the parent application of the patents-in-suit, the examiner asserted that the pending method and apparatus claims covered two distinct inventions, and required the applicant to restrict the invention to either group of claims. The applicant traversed the restriction requirement, arguing that all of the claims were drawn to a single invention because the method claims “use an automated shipping machine as set forth in the preamble.”

The Federal Circuit agreed to the CFC construction of the claims that "only an automated machine can perform" based on the specification and the prosecution history. The Court, in rejecting Uship’s proposition that prosecution disclaimer applies only when applicants attempt to overcome a claim rejection, held that a patent applicant’s response to a restriction requirement may be used to interpret patent claim terms or as a source of disclaimer.

Also, the Federal Circuit noted that the applicant’s response to the restriction requirement in this case constitutes a clear and unmistakable disclaimer of claim scope because the applicant explicitly represented that reciting “using an automated shipping machine” in the preamble is equivalent to “specifically reciting” that phrase at each step of the method. Thus, the Federal Circuit affirmed the CFC's grant of summary judgment of noninfringement with respect to the asserted claims.