In an August 6, 2015 ruling, Judge Richard J. Sullivan found that the inventor of the family of patents-in-suit acted as his own lexicographer by submitting unsolicited “remarks” during the prosecution of one of the later patents in the family (the ‘010 patent). The Court wrote:There is no dispute that the “remarks” Joao [the inventor] to the USPTO are part of the prosecution history for the ‘010 Patent, and although Defendants question his motives – noting that the constructions contained in the “remarks” simply echoed the constructions proposed in the claim construction brief of an unrelated case – for purposes of claim construction, the “remarks” appear sufficiently clear, deliberate, and precise.Judge Sullivan then considered whether the “remarks” were pertinent to one of the earlier patents in the same family that had an identical specification, and used “the ‘remarks’ as extrinsic evidence for purposes of construing the terms of” that patent “to the extent those remarks do not directly contradict the plain meaning of those terms and such terms cannot be construed without the aid of extrinsic evidence.”
