Monday, August 6, 2012

Pro Se Prosecution No Defense to Application of Prosecution History Estoppel

The court granted plaintiff's motion for summary judgment of no infringement under the doctrine of equivalents of defendant's tuner patent. Prosecution history estoppel precluded application of the doctrine of equivalents even though the inventor prosecuted his application pro se and, defendant argued, did not understand the effect of his amendments. "The horizontal and vertical range limitations were originally included as dependent claims; in response to prior art objections, [the inventor] added a new revised independent claim that included those limitations, and cancelled the broader independent claim he had originally proposed. . . . [Defendant] cites no authority for the proposition that a patentee acting pro se can escape estoppel where others could not, and the court declines to adopt such a broad rule in the absence of controlling precedent."

Maury Microwave, Inc. v. Focus Microwaves, Inc., 2-10-cv-03902 (CACD July 30, 2012, Order) (Morrow, J.).

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