Bright Data Ltd. v. Code200, UAB, et al.

T his Cou r t cautioned i n Markm an v. Westv iew Instruments, 517 U.S. 370, 390 (1996) that the “limits of a patent must be known” to benefit the public and avoid a “zone of uncertainty” as to the scope of patent protection. Toward this end, the courts have long recognized that a patentee may make binding definitional and disclaimer statements limiting patent claim scope. But the Federal Circuit has been inconsistent in applying such disclaimers, including statements made during inter partes reviews (IPRs). Here, in an IPR, the petitioner expressly disclaimed scope. The Federal Circuit invalidated patent claims by refusing to apply the patentees “far narrower” constructions that matched its disclaimer. App. 8a-9a. To preserve the sanctity of the prosecution and review process as the essential foundation for the proper functioning of the patent system, the question presented is: 1. When a patentee disclaims subject matter from the scope of its claims by written statements made at any time during U.S. Patent and Trademark Office proceedings, including during an inter partes review, are courts precluded from construing the claims more broadly than the scope of the disclaimer?