{"id":135583,"date":"2025-10-21T16:52:38","date_gmt":"2025-10-22T00:52:38","guid":{"rendered":"https:\/\/xira.com\/p\/2025\/10\/21\/watch-your-words\/"},"modified":"2025-10-21T16:52:38","modified_gmt":"2025-10-22T00:52:38","slug":"watch-your-words","status":"publish","type":"post","link":"https:\/\/xira.com\/p\/2025\/10\/21\/watch-your-words\/","title":{"rendered":"Watch Your Words"},"content":{"rendered":"
\"\"
<\/figcaption><\/figure>\n

As fall Fridays go, the one last week was pretty eventful, at least for patent types. While I will let the proverbial dust settle for a bit on the big news<\/a> out of the USPTO regarding changes to the IPR scheme, there is no doubt that seismic change is afoot. The fallout promises to impact everyone up and down the patent ecosystem\u2019s food chain, from patent owners, to defendants, and the entire universe of vendors, funders, and counsel that has been developed over the past decade to deal with parallel litigation in patent cases between district courts and the USPTO\u2019s PTAB. But there will be plenty of time to see what changes going forward, even as the heads of many have already been spinning for much of this year based on the implementation of a more robust discretionary denial gauntlet for IPR petitioners to navigate through. Instead, it is worthwhile to use this week\u2019s column to discuss another of Friday\u2019s developments, a Federal Circuit precedential opinion that provides a potent reminder of the importance of patent owners and their counsel watching their words \u2014 at least if they want to avoid limiting their patent scope and value via prosecution disclaimer.<\/p>\n

The case in question, Barrette Outdoor v. Fortress Iron<\/em><\/a>, came to the Federal Circuit out of the Northern District of Texas after a claim construction ruling that the plaintiff agreed made it impossible to prove their case of infringement. As a result of that stipulation, the district court entered a final judgment of no infringement of any of Barrette\u2019s four asserted patents, with Barrette appealing that judgment to the Federal Circuit. Unsurprisingly, the defendants cross-appealed to push forward their rejected indefiniteness defense, because nothing is sweeter than getting out of a patent case for a defendant than killing the patents that had caused the trouble to begin with. On appeal, the panel concluded that the district court was right in entering judgment of noninfringement, and rejected the cross-appeal that the patents were indefinite. A win for the defendant, but at least the patents survive for the plaintiff to continue playing with. (As always, for those interested in a learned analysis of the opinion, I commend Prof. Crouch\u2019s write-up<\/a> on Patently-O, available in full to subscribers of his worthy publication.) For our purposes, the salient question is why the Federal Circuit chose to make this dispute over lawn fence technology the basis for a precedential opinion. The short answer is that claim construction as a matter of law is always important \u2013 and likely to generate precedential guidance that governs future similar proceedings.<\/p>\n

Let\u2019s go a bit deeper to try and tease out what guidance the panel is offering to us going forward. To start, all of the asserted patents \u201cshare a common specification and parent application,\u201d which \u201cdescribes a fencing assembly featuring pivoting, sliding connectors that connect pickets to rails.\u201d At the heart of the inventions was an improved connector that offered advantages over the prior art fencing assembly methods previously available. After getting a few patents issued, Barrette\u2019s continuing prosecution efforts hit a roadblock when an examiner found a prior art reference that allegedly disclosed Barrette\u2019s connector. As a result, Barrette tried to distinguish over that reference, before cutting bait and substituting in narrower claims that led to another patent issuance when that effort failed. Eventually, Barrette identified what it thought was infringement by the defendants and filed suit.<\/p>\n

The case went to a claim construction hearing, where Barrette argued for broad constructions of the disputed patent claims. In response, the defendants argued that the claims were indefinite with respect to \u201cthe sliding terms\u201d while also arguing that the\u00a0 \u201cterm \u201cboss\u201d should be construed as limited to integral, fastener-less structures.\u201d And because the parties agreed \u201c that the terms \u2018boss,\u2019 \u2018projection,\u2019 and \u2018nub\u2019 are used interchangeably,\u201d once the district court \u201c limited the \u201cboss\u201d terms to integral structures by distinguishing the \u201cclaimed integral bosses\u201d from the \u201cconventional pivot hole and pivot pin assembly\u201d disclosed\u201d in the prior art, it was game over for Barrette\u2019s infringement case. On appeal, the Federal Circuit agreed that the district court got some elements of claim construction wrong, but refused to disturb the construction limiting \u201cboss\u201d to \u201cintegral structures\u201d based on the disclaimer over the prior art in prosecution.\u00a0 Accordingly, the judgment of noninfringement was affirmed.\u00a0<\/p>\n

In doing so, the panel rejected Barrette\u2019s argument that its alleged prosecution disclaimer could not apply to earlier issued patents than the patent in which the alleged disclaimers were made. In the panel\u2019s view the situation presented here was one where the disclaimer clarifying a more limited claim scope was clear \u2014 with Barrette\u2019s argument really one that \u201csubsequent communications with the patent office rendered any purported disclaimer ambiguous.\u201d In light of that posture, the panel\u00a0 found that the \u201cprosecution history would not suggest to a reasonable reader that Barrette\u2019s narrowing characterization of its claims was incorrect.\u201d\u00a0Nor could Barrette\u2019s cancellation of the claims at issue prevent the disclaimer because Barrette never rescinded the disclaimer before the examiner. Finally, just because the disclaimer was made in a later-issued patent\u2019s prosecution was not enough to save it from applying to earlier familiar members, based on earlier Federal Circuit precedent that when terms are shared across patents, statements about the scope of those terms apply, \u201cregardless of whether the statement pre- or post-dates the issuance of the particular patent at issue.\u201d\u00a0<\/p>\n

Ultimately, the Barrette decision confirms the importance of considering the prosecution history of all related patents when determining how best to assert or defend against a patent infringement claim at the claim construction stage. In a way, it reminds us that a patent owner\u2019s statements about the scope of its patents must always be considered carefully \u2013 with narrowing statements deserving of extreme scrutiny by patent owners before they are made if at all possible. Conversely, defendants must make sure that they scour the prosecution histories of related patents to find any limiting statements that can apply to common terms. More work for everyone, but an important reminder to all involved of the importance of watching one\u2019s words.<\/p>\n

Please feel free to send comments or questions to me at gkroub@kskiplaw.com or via Twitter: @gkroub<\/a>. Any topic suggestions or thoughts are most welcome.\u00a0<\/p>\n

\n

Gaston Kroub lives in Brooklyn and is a founding partner of\u00a0<\/em><\/strong>Kroub, Silbersher & Kolmykov PLLC<\/em><\/strong><\/a>, an intellectual property litigation boutique, and\u00a0<\/em><\/strong>Markman Advisors LLC<\/em><\/strong><\/a>, a leading consultancy on patent issues for the investment community. Gaston\u2019s practice focuses on intellectual property litigation and related counseling, with a strong focus on patent matters. You can reach him at\u00a0<\/em><\/strong>gkroub@kskiplaw.com\u00a0<\/em><\/strong><\/a>or follow him on Twitter:\u00a0<\/em><\/strong>@gkroub<\/em><\/strong><\/a>.<\/em><\/strong><\/p>\n<\/p>\n

The post Watch Your Words<\/a> appeared first on Above the Law<\/a>.<\/p>\n

\"\"
<\/figcaption><\/figure>\n

As fall Fridays go, the one last week was pretty eventful, at least for patent types. While I will let the proverbial dust settle for a bit on the big news<\/a> out of the USPTO regarding changes to the IPR scheme, there is no doubt that seismic change is afoot. The fallout promises to impact everyone up and down the patent ecosystem\u2019s food chain, from patent owners, to defendants, and the entire universe of vendors, funders, and counsel that has been developed over the past decade to deal with parallel litigation in patent cases between district courts and the USPTO\u2019s PTAB. But there will be plenty of time to see what changes going forward, even as the heads of many have already been spinning for much of this year based on the implementation of a more robust discretionary denial gauntlet for IPR petitioners to navigate through. Instead, it is worthwhile to use this week\u2019s column to discuss another of Friday\u2019s developments, a Federal Circuit precedential opinion that provides a potent reminder of the importance of patent owners and their counsel watching their words \u2014 at least if they want to avoid limiting their patent scope and value via prosecution disclaimer.<\/p>\n

The case in question, Barrette Outdoor v. Fortress Iron<\/em><\/a>, came to the Federal Circuit out of the Northern District of Texas after a claim construction ruling that the plaintiff agreed made it impossible to prove their case of infringement. As a result of that stipulation, the district court entered a final judgment of no infringement of any of Barrette\u2019s four asserted patents, with Barrette appealing that judgment to the Federal Circuit. Unsurprisingly, the defendants cross-appealed to push forward their rejected indefiniteness defense, because nothing is sweeter than getting out of a patent case for a defendant than killing the patents that had caused the trouble to begin with. On appeal, the panel concluded that the district court was right in entering judgment of noninfringement, and rejected the cross-appeal that the patents were indefinite. A win for the defendant, but at least the patents survive for the plaintiff to continue playing with. (As always, for those interested in a learned analysis of the opinion, I commend Prof. Crouch\u2019s write-up<\/a> on Patently-O, available in full to subscribers of his worthy publication.) For our purposes, the salient question is why the Federal Circuit chose to make this dispute over lawn fence technology the basis for a precedential opinion. The short answer is that claim construction as a matter of law is always important \u2013 and likely to generate precedential guidance that governs future similar proceedings.<\/p>\n

Let\u2019s go a bit deeper to try and tease out what guidance the panel is offering to us going forward. To start, all of the asserted patents \u201cshare a common specification and parent application,\u201d which \u201cdescribes a fencing assembly featuring pivoting, sliding connectors that connect pickets to rails.\u201d At the heart of the inventions was an improved connector that offered advantages over the prior art fencing assembly methods previously available. After getting a few patents issued, Barrette\u2019s continuing prosecution efforts hit a roadblock when an examiner found a prior art reference that allegedly disclosed Barrette\u2019s connector. As a result, Barrette tried to distinguish over that reference, before cutting bait and substituting in narrower claims that led to another patent issuance when that effort failed. Eventually, Barrette identified what it thought was infringement by the defendants and filed suit.<\/p>\n

The case went to a claim construction hearing, where Barrette argued for broad constructions of the disputed patent claims. In response, the defendants argued that the claims were indefinite with respect to \u201cthe sliding terms\u201d while also arguing that the\u00a0 \u201cterm \u201cboss\u201d should be construed as limited to integral, fastener-less structures.\u201d And because the parties agreed \u201c that the terms \u2018boss,\u2019 \u2018projection,\u2019 and \u2018nub\u2019 are used interchangeably,\u201d once the district court \u201c limited the \u201cboss\u201d terms to integral structures by distinguishing the \u201cclaimed integral bosses\u201d from the \u201cconventional pivot hole and pivot pin assembly\u201d disclosed\u201d in the prior art, it was game over for Barrette\u2019s infringement case. On appeal, the Federal Circuit agreed that the district court got some elements of claim construction wrong, but refused to disturb the construction limiting \u201cboss\u201d to \u201cintegral structures\u201d based on the disclaimer over the prior art in prosecution.\u00a0 Accordingly, the judgment of noninfringement was affirmed.\u00a0<\/p>\n

In doing so, the panel rejected Barrette\u2019s argument that its alleged prosecution disclaimer could not apply to earlier issued patents than the patent in which the alleged disclaimers were made. In the panel\u2019s view the situation presented here was one where the disclaimer clarifying a more limited claim scope was clear \u2014 with Barrette\u2019s argument really one that \u201csubsequent communications with the patent office rendered any purported disclaimer ambiguous.\u201d In light of that posture, the panel\u00a0 found that the \u201cprosecution history would not suggest to a reasonable reader that Barrette\u2019s narrowing characterization of its claims was incorrect.\u201d\u00a0Nor could Barrette\u2019s cancellation of the claims at issue prevent the disclaimer because Barrette never rescinded the disclaimer before the examiner. Finally, just because the disclaimer was made in a later-issued patent\u2019s prosecution was not enough to save it from applying to earlier familiar members, based on earlier Federal Circuit precedent that when terms are shared across patents, statements about the scope of those terms apply, \u201cregardless of whether the statement pre- or post-dates the issuance of the particular patent at issue.\u201d\u00a0<\/p>\n

Ultimately, the Barrette decision confirms the importance of considering the prosecution history of all related patents when determining how best to assert or defend against a patent infringement claim at the claim construction stage. In a way, it reminds us that a patent owner\u2019s statements about the scope of its patents must always be considered carefully \u2013 with narrowing statements deserving of extreme scrutiny by patent owners before they are made if at all possible. Conversely, defendants must make sure that they scour the prosecution histories of related patents to find any limiting statements that can apply to common terms. More work for everyone, but an important reminder to all involved of the importance of watching one\u2019s words.<\/p>\n

Please feel free to send comments or questions to me at [email\u00a0protected]<\/a> or via Twitter: @gkroub<\/a>. Any topic suggestions or thoughts are most welcome.\u00a0<\/p>\n

\n

Gaston Kroub lives in Brooklyn and is a founding partner of\u00a0<\/em><\/strong>Kroub, Silbersher & Kolmykov PLLC<\/em><\/strong><\/a>, an intellectual property litigation boutique, and\u00a0<\/em><\/strong>Markman Advisors LLC<\/em><\/strong><\/a>, a leading consultancy on patent issues for the investment community. Gaston\u2019s practice focuses on intellectual property litigation and related counseling, with a strong focus on patent matters. You can reach him at\u00a0<\/em><\/strong>[email\u00a0protected]\u00a0<\/em><\/strong><\/a>or follow him on Twitter:\u00a0<\/em><\/strong>@gkroub<\/em><\/strong><\/a>.<\/em><\/strong><\/p>\n","protected":false},"excerpt":{"rendered":"

As fall Fridays go, the one last week was pretty eventful, at least for patent types. While I will let the proverbial dust settle for a bit on the big news out of the USPTO regarding changes to the IPR scheme, there is no doubt that seismic change is afoot. The fallout promises to impact […]<\/p>\n","protected":false},"author":3,"featured_media":135584,"comment_status":"","ping_status":"","sticky":false,"template":"","format":"standard","meta":{"_et_pb_use_builder":"","_et_pb_old_content":"","_et_gb_content_width":"","_jetpack_memberships_contains_paid_content":false,"footnotes":""},"categories":[16],"tags":[],"class_list":["post-135583","post","type-post","status-publish","format-standard","has-post-thumbnail","hentry","category-above_the_law"],"jetpack_featured_media_url":"https:\/\/i0.wp.com\/xira.com\/p\/wp-content\/uploads\/2025\/10\/iStock_000044552904_Medium-e1446146912557-dtg4FK.jpg?fit=565%2C376&ssl=1","jetpack_sharing_enabled":true,"_links":{"self":[{"href":"https:\/\/xira.com\/p\/wp-json\/wp\/v2\/posts\/135583","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/xira.com\/p\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/xira.com\/p\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/xira.com\/p\/wp-json\/wp\/v2\/users\/3"}],"replies":[{"embeddable":true,"href":"https:\/\/xira.com\/p\/wp-json\/wp\/v2\/comments?post=135583"}],"version-history":[{"count":0,"href":"https:\/\/xira.com\/p\/wp-json\/wp\/v2\/posts\/135583\/revisions"}],"wp:featuredmedia":[{"embeddable":true,"href":"https:\/\/xira.com\/p\/wp-json\/wp\/v2\/media\/135584"}],"wp:attachment":[{"href":"https:\/\/xira.com\/p\/wp-json\/wp\/v2\/media?parent=135583"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/xira.com\/p\/wp-json\/wp\/v2\/categories?post=135583"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/xira.com\/p\/wp-json\/wp\/v2\/tags?post=135583"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}