The patented eyeglass frame had two frames: a primary and an auxiliary, one behind the other. With claims 12, 16, and 24 under the microscope, the contested claim limitations went "to arms extending from the auxiliary frame: "an arm extended therefrom for extending toward and beyond said rear side"".

The district court construed these limitations to "require that the arms of the auxiliary frames do not extend past the rear edge of the projection of the primary frame containing or securing the magnetic member." Summary Judgment Order, slip op. at 30. Because Miracle's Magic Clip products have an auxiliary frame with arms that extend beyond the projection containing the magnetic member, the court ruled that the "accused product does not read on the claimed invention," id. at 34, and therefore did not literally infringe the '545 patent, id. at 36. The court also determined that prosecution history estoppel barred the applicability of the doctrine of equivalents. Id. at 38. Accordingly, the district court granted Miracle's motions for partial summary judgment of no literal infringement and of no infringement under the doctrine of equivalents.

It is undisputed that claims 12, 16, and 24 do not expressly contain a limitation that the auxiliary frame arms cannot extend past the rear edge of the projection of the primary frame containing or securing the magnetic member. The written description, too, is silent as to such a limitation. Thus, at issue here is whether the prosecution history mandates that the claim language be construed to require that the arms extending from the auxiliary frame cannot extend beyond the rear edge of the projection of the primary frame, as the district court held.

During reissue proceedings, additions to the specification were proposed, including an additional drawing, Figure 8, and new claims were proposed. The examiner disapproved the proposed drawing because it introduced new matter into the drawings... The examiner also rejected the proposed new claims that were directed to the subject matter of Figure 8...The applicant responded to these rejections by pointing to the following excerpt from the original specification, arguing this excerpt provided the support for the new claims and drawings....

Following an interview with the applicant, the examiner indicated that the new matter rejection with respect to the claims was overcome. With respect to proposed Figure 8, the examiner "clarified his objection by stating that he was not objecting to a downwardly extending end portion per se, but to the fact that the end portion extends laterally past the rear edge of the projection." The applicant, however, continued to maintain that Figure 8 did not represent new matter and expressed this position in his next filing... Additionally, the applicant noted that in view of the examiner's statements during the interview Figure 8 was no longer necessary.

The application was subsequently issued with no further mention of Figure 8, other than the examiner's statement "[t]he cancellation of the newly added Fig. 8 is acknowledged."

The district court concluded that this prosecution history imposed the limitation on the claimed invention that the auxiliary frame arms could not extend past the rear edge of the primary frame projections.

We disagree with the district court's reading of the prosecution history. There is no suggestion that the applicant simply "accepted" the examiner's position that the arms from the auxiliary frame could not extend past the rear edge of the projection of the primary spectacle frame. In fact, following an interview with the examiner the applicant specifically stated that he was "of the opinion that the original specification supports new Figure 8." As the prosecution history cited above reflects, the applicant's reason for ultimately canceling Figure 8 was because the examiner indicated during the interview that he would waive the requirements of 37 C.F.R. § 1.83 with respect to "the end portion of the arm of the auxiliary frame extended downward towards the projection for hooking on the primary spectacle frame." In other words, the applicant took the position that Figure 8 was no longer necessary; he did not, contrary to the district court's conclusion, concede that the subject matter of Figure 8 was unpatentable.

In view of the applicant's statements, we cannot say that the canceling of Figure 8 was a clear and deliberate disclaimer of the claim coverage suggested by Figure 8. See SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) ("To be given effect, such a [prosecution history] disclaimer must be made with 'reasonable clarity and deliberateness.'") (quoting N. Telecom Ltd. v. Samsung Elecs. Co., 215 F.3d 1281, 1294 (Fed. Cir. 2000)). Further evidence that the subject matter of Figure 8 was not disclaimed by the applicant is seen by his continued prosecution of claims directed to the depicted embodiment. In fact, the examiner allowed claims that are broad enough to encompass the canceled Figure 8; namely, claims 12, 16, and 24.

Additionally, the district court read the prosecution history as suggesting that the subject matter represented in Figure 8 was new matter and therefore not eligible for claim coverage. This interpretation is belied by the prosecution history of claims drawn to such subject matter.

Summarizing, because 1) the applicant's position that the original specification supported Figure 8; 2) the examiner's only objection to Figure 8 was that it was based on new matter; 3) the examiner subsequently viewed the subject matter of Figure 8 to be not "new"; and 4) the examiner allowed claims that are broad enough to encompass Figure 8, we cannot conclude that the applicant disclaimed the subject matter of Figure 8. Accordingly, the district court erred in its construction of claims 12, 16, and 24 by imposing a limitation on the claims that the arms extending back from the auxiliary spectacle frame cannot extend past the rear edge of the projection containing the magnetic members of the primary frame.

Overturning the claim construction knocked down the frame on which the district court's non-infringement ruling was built. Remanded.