Challenge
The examiner allowed the claims because of a VPN feature, yet that limitation never made it into the issued independent claims. It was unclear how to use this gap in litigation, or whether it would hold up if the plaintiff argued it was a clerical error.
Approach
We connected three documents from the prosecution history: the examiner-initiated interview, the examiner’s email to applicant’s counsel, and the reason for allowance. Together they showed the VPN limitation was meant to be in the independent claims and was what overcame the prior art.
Read as issued, the claim could be exposed to the very prior art the examiner cited, which supported an invalidity position. We then tested the plaintiff’s likely rebuttal by checking a trial version of the accused product, which had no VPN functionality.
Even if the claim were corrected, non-infringement would still hold, so one file history insight gave two independent litigation positions.
Watch the complete case study here
