concurring in part and dissenting in part.
I agree that the judgment should be affirmed. However, I respectfully dissent from the majority’s construction of “capable of flexing” limitation in claim 1 of the '674 patent. The majority’s claim construction allows the patentee to claim the very device disclaimed in the course of patent prosecution, a result plainly at odds with our precedent. However, I would affirm on the ground that the appellant did not preserve this error in its objection to the jury instruction.
The contested limitation of claim 1 of the '674 patent requires that the device have a plurality of wings “capable of flexing about said base.” In its request for reexamination, Arlington distinguished claim 1 of the '674 patent from the McShane patents and the DADJ device described in the McShane brochure (which was also before the examiner) as follows:
There is no flexing of the wings involved in the McShane box extenders. The wings or sides are not capable of flexing about the base. The four wings of the electric box extender are substantially rigid. There is no adjustability by flexing of the wings designed into the McShane box extenders to allow the tubular body portions to be received in an existing electrical box. The McShane box extenders telescope into the electrical box without engaging the sides or walls.
(emphasis added). The examiner relied on this statement to deny the request for reexamination, finding that the newly cited McShane references did not “raise a substantial new question of patentability” as to the claims of the '674 patent.
The doctrine of prosecution disclaimer “limits the interpretation of claims so as to exclude any interpretation that may have been disclaimed or disavowed during prosecution in order to obtain claim allowance.” Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1324 (Fed.Cir.2003) (quoting Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 452 (Fed.Cir.1985)). Arguments made in a reexamination proceeding will constitute a disclaimer of claim scope if they are “clear and unmistakable statements of disavowal.” See Cordis Corp. v. Medtronic Ave, Inc., 339 F.3d 1352, 1358 (Fed.Cir.2003).
Here, Arlington has unmistakably disclaimed box extenders like those disclosed in the McShane patents and the McShane brochure featuring the DADJ device because they are not capable of flexing about the base as claim 1 requires. The question then is — what is the extent of this disclaimer? In other words, “[w]e must determine what one of ordinary skill in the art would believe to have been disclosed” by the disclaimed references. Pall Corp. v. PTI Tech., Inc., 259 F.3d 1383, 1393 *1333(Fed.Cir.2001), vacated on other grounds, 535 U.S. 1109, 122 S.Ct. 2324, 153 L.Ed.2d 152 (2002).
At trial there was undisputed testimony from both the inventor and Arlington’s expert that the DADJ product, a device embodying the McShane patents and disclosed in the McShane brochure, was capable of bowing. Gretz, the inventor of the '674 patent, testified that when the DADJ product was inserted, “[t]he body portion bowed in.” Likewise, despite the statements in Arlington’s request for reexamination regarding the inflexibility of the McShane device, Arlington’s expert testified that the DADJ product was capable of bowing:
Bridgeport’s Counsel:
[I]f you apply pressure to the end walls of the DADJ product it does flex, does it not?
Witness:
You can see ... it flex to a modest degree, yes.
Bridgeport’s Counsel:
[W]hen you pressed on the walls of the DADJ there was some cantilever bending, correct — isn’t that correct?
Witness:
No, sir, there is not. There is a slight bowing that takes place.
Tr., Vol. 2 at 102-03. The majority notes that there is no indication in the McShane references themselves that the disclosed extender boxes or the DADJ product were designed to flex. Ante at 1329. But even if this is true, the uncon-tradicted testimony of Arlington’s experts establishes that one of skill in the art would recognize that the DADJ device embodying the references that were before the examiner was capable of bowing. Under these circumstances, Arlington disclaimed a device that merely bowed, but did not flex about the base. See Pall, 259 F.3d at 1383 (holding that the relevant inquiry is what one of ordinary skill in the art would believe to have been disclosed by the prior art). Therefore, the claim term, “capable of flexing about said base” must be construed to require something more than bowing. Rather, it must be construed to require flexing about the base.
The district court instructed the jury that the “capable of flexing” limitation in claims 1 and 15 means “a generalized combination of cantilever bending and bowing about the general area of the base or base end.” Trial Tr., Vol. 5 at 120. While confusing, the instruction appears to permit the jury to find that the “capable of flexing” limitation is satisfied by mere bowing. To that extent the instruction was erroneous.
Bridgeport objected to the instruction, but its proposed alternative did not, in fact, eliminate the reference to bowing; rather it simply offered a more precise definition of “cantilever bending,” namely that “[t]he flexing of each of the wings about its respective base end is a cantilever flexing.” However, the error lay not in the failure to provide a more precise definition of cantilever bending, but in including the reference to bowing. “ ‘To prevail the party challenging a jury instruction must demonstrate both that the jury instructions actually given were fatally flawed and that the requested instruction was proper and could have corrected the flaw.’” Texas Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1216 (Fed.Cir.2002) (quoting Biodex Corp. v. Loredan Biomedical, Inc., 946 F.2d 850, 862 (Fed.Cir.1991)) (emphasis added). Consequently, Bridgeport has failed to carry its burden on appeal to show prejudicial error. See Id.
I concur in the result.