Hagenbuch v. Sonrai Sys., No. 13 C 7042, Slip Op. (N.D. Ill. Sep. 10, 2015) (Durkin, J.).

Judge Durkin granted plaintiff’s motion to reconsider the Court’s summary judgment ruling that certain patents in suit had expired based upon a terminal disclaimer. Plaintiff’s arguments were not simply rehashing an old issue because the Court itself had identified the issue in its opinion as one where the parties’ positions were in tension, but that had not been fully developed.

During prosecution, plaintiff provided a terminal disclaimer for his patent application based upon another of his patents. The Patent Office later asked plaintiff to extend the disclaimer to all applications in the family. Plaintiff did so, revising his disclaimer to include the application “or any continuation of it under 35 U.S.C. § 120.” In subsequent sentences, the disclaimer referred to the application and continuations, without citation to § 120. The ambiguity arises because § 120 allowed for terminal disclaimers for any application pending during the life of the original patent or during the life any other application or patent which could claim the filing date of the original patent. The Patent Office’s Manual of Patent Examination and Procedure (“MPEP”) (in the relevant 1993 edition), however, defined “continuation” as being limited to the first of § 120’s two conditions.

Plaintiff argued that he was relying upon the Patent Office’s narrower definition in his disclaimer, not the § 120 broader definition. Plaintiff’s decision not to rely upon the Patent Office’s standard disclaimer language and to use the term “continuation” evidences an intent to limit his disclaimer.