Duane Morris LLP - Avoiding the Present (Invention)

By-Lined Article

Avoiding the Present (Invention)

By Gary R. Maze
February 17, 2006
Patent, Trademark and Copyright Journal

Tension often exists in patent law between knowing when what has been written is sufficient and when it is too much. In reviewing their applications, many inventors and patent application drafters may focus careful attention on the application's claims, but unknowingly or carelessly make seemingly innocent statements about the "present invention" that may needlessly narrow the claims' meaning.¹ This narrowing can almost always be avoided.

Use of Phrases May Narrow the Claims.

It is a well-established canon of claim construction that when an invention's particular embodiment is described in the specification as the "claimed invention," and not just one way of describing or using it, none of the patent's claims may be entitled to a scope broader than that described embodiment.² Even so, over 130,000 patents that issued in 2005 used the phrase "present invention," despite the fact that using the "present invention" without any apparent disclaimer³ can lead to the legal conclusion that the associated description or argument applies to each and every claim.⁴ Statements that define "the invention" as employing a certain feature, e.g. a certain structure, and/or that distinguish the application over the prior art based on that structure, even in part, may be held to have that structure apply to all claims, especially if expressly made applicable to "all embodiments of the present invention."⁵ Even limitations illustrated in drawings can be held to be narrowing if described as illustrating "the present invention."⁶ Therefore, even though the specification may characterize an exemplary embodiment as "the invention" or the "present invention," a court may still limit all the claims to that embodiment.⁷

The specification is not the sole source of such limitation. The entire prosecution history can affect the claims' interpretation because an applicant's assertions of characteristics of "the present invention" during prosecution may have the same effect as those statements appearing in the specification.⁸ In fact, these characterizations can even narrow the scope of continuation or continuation-in-part applications.⁹ The Federal Circuit and district courts have applied representations about "the present invention" or "the invention" to narrow the scope of all claims.¹⁰ However, express representations are not always necessary. In a recent district court case, for example, a patent application contained something similar to the following statement: "This invention includes a novel reference measurement circuit which samples and measures the carrier reference's phase and/or frequency relative to the discrete time sampling."¹¹ Later, the patent applicant made responsive statements, similar to the following, to a patent examiner who had rejected claims 1-10, but allowed claims 11-20, of the "novel" aspects of the asserted invention:

The novel reference measurement circuit has the particular advantage of operating to properly supply reference signals clocked a first way, or even if clocked with free running or gated free running clocks which are features of the present invention. . . . The prior art is considerably different than applicant's invention which is operable to generate reference signals or values with these clocks.¹²

The applicant had argued during prosecution that "the prior art is 'considerably different than applicant's invention' " and then proceeded to describe these multiple clocking modes as that considerable difference.¹³ Therefore, both the specification and the applicant's prosecution arguments described the "invention's" purported "novel" feature as being a distinguishing feature of "the present invention" over the prior art. The district court held that these statements meant that this "novel" feature therefore applied to all claims, not just the rejected ones, given the applicant's use of the phrase "applicant's invention" in those arguments.¹⁴ On the other hand, even where language in the specification recurrently recites a particular feature as being an "advantage of the present invention," at least one Federal Circuit panel held that such limitations from the specification could not be imported into the claims.¹⁵ In that particular case, the specification also disclosed alternative, albeit not preferred, options to that particular "advantage."¹⁶ Additionally, the language in the claims may make it "reasonably clear" that the inventor did not intend to limit the scope of the claim to those structures attributed to "the present invention."¹⁷

For example, the majority in a recent Federal Circuit case held that the specification's explicit statement that "all routing is accomplished based on logical addresses, not physical addresses" applied only to the preferred embodiment.¹⁸ However, Judge Timothy B. Dyk, in dissent, disagreed, writing that

[T]he patentee clearly demonstrated that the upstream manager accomplishes routing by logical addressing. The specification characterizes the "present invention" as including [a certain] logical addressing limitation. . . .

Citing SciMed Life Systems Inc. at 1343, Judge Dyk characterized the use of the term "present invention" as "strong evidence that [this certain] logical addressing applies to the invention as a whole, not just the preferred embodiment."¹⁹

Conclusion

Accordingly, although "it is the claims that measure the invention,"²⁰ the entire patent application, including the claims, specification, and drawings, must be carefully examined by a patent applicant before submitting the application and statements made to the patent examiner scrutinized before submitting responses. Embodiments described in the specification and arguments made to the Patent and Trademark Office should avoid using the phrases "the invention" or the "present invention" and should, instead, describe embodiments as alternatives, e.g. the "preferred embodiment" or "as claimed in claim 'x.' "²¹ When responding to an office action, patent applicants should clearly narrow their argument to address just the claim being discussed and avoid any argument that includes the phrases "the present invention" or "the invention" unless those phrases are specifically narrowed to the claim being distinguished.

Additionally, patent litigators should examine the entire file history for these statements during their Markman exercises. When litigating, the parties (defendants, especially) should review the specification and file history for instances of use of the phrases "present invention" or "the invention" for further analysis of limitation of claim scope.

Footnotes

See, e.g., Teleflex Inc. v. Ficosa North America Corp., 299 F.3d 1313, 1327, 63 USPQ2d 1374 (Fed. Cir. 2002) (64 PTCJ 189, 6/28/02) (statements in specification may narrow claim scope)
Networld LLC v. Centraal Corp., 242 F.3d 1347, 1352, 58 USPQ2d 1076 (Fed. Cir. 2001) (61 PTCJ 491, 3/23/01)
See, e.g., Gart v. Logitech Inc., 254 F.3d 1334, 59 USPQ2d 1290 (Fed. Cir. 2001) (62 PTCJ 219, 7/13/01) ("[]Gart also notes in the specification that the ‘prior art . . . either [does] not provide the full ergonomic surface design of the present invention. . . From the foregoing, we conclude that Gart distinguished his preferred embodiment from particular prior art references on the basis of its undercut feature: but, Gart also noted that those same references did not contain all of the ergonomic surface features of the invention or were incompatible with the surface shapes needed in a hand controller. In other words, Gart did not in any way limit all of his claims to a controller with an angular medial ledge by the remarks distinguishing the prior art.")
See, e.g., SciMed Life Systems Inc. v. Advanced Cardiovascular Systems Inc., 242 F.3d 1337, 1343, 58 USPQ2d 1059 (Fed. Cir. 2001) (61 PTCJ 489, 3/23/01)("the characterization of [a limitation] as part of the 'present invention' is strong evidence that the claims should not be read to encompass the opposite structure.")
SciMed Life Systems Inc., 242 F.3d at 1344; Pharmacia & Upjohn Co. v. Mylan Pharmaceuticals Inc., 170 F.3d 1373, 1378, 50 USPQ2d 1033 (Fed. Cir. 1999) (57 PTCJ 421, 3/25/99).

Superguide Corp. v. DirecTV Enterprises Inc., 358 F.3d 870, 69 USPQ2d 1865 (Fed. Cir. 2004)(67 PTCJ 348, 2/20/04) (holding that claims were narrowed because description of figures included phrase "according to the present invention.").
Aguayo v. Universal Instruments Corp., 356 F. Supp.2d 699, 727 (S.D.Tex. 2005), citing Microsoft Corp. v. Multi-Tech Systems, 357 F.3d 1340, 1348, 69 USPQ2d 1815 (Fed. Cir. 2004) (67 PTCJ 321, 2/13/04)("In light of those clear statements in the specification that the invention ('the present system') is directed to communications 'over a standard telephone line,' we cannot read the claims . . . to encompass data transmission over a packet-switched network such as the Internet."); Cultor Corp. v. A.E. Staley Manufacturing Co., 224 F.3d 1328, 1331, 56 USPQ2d 1208 (Fed. Cir. 2000)(60 PTCJ 591, 9/21/00) ("Whether a claim must, in any particular case, be limited to the specific embodiment presented in the specification, depends in each case on the specificity of the description of the invention and on the prosecution history. These sources are evaluated as they would be understood by persons in the field of the invention.")
Pharmacia & Upjohn Co., at 1378 ("key feature of the present invention" statement during prosecution surrendered scope)
See, e.g., Ballard Medical Products v. Allegiance Healthcare Corp., 268 F.3d 1352, 60 USPQ2d 1493 (Fed. Cir. 2001) (62 PTCJ 561, 10/19/01) (appropriate for court to treat distinction of prior art valves as applying equally to related application where during prosecuting of subsequent application applicant noted "the present invention is . . . patentable over the same [prior art] for reasons stated in the parent case".)
SciMed Life Systems Inc., 242 F.3d at 1343; Wang Laboratories Inc. v. America Online Inc., 197 F.3d 1377, 1383, 53 USPQ2d 1161 (Fed. Cir.1999) (59 PTCJ 404, 12/24/99); Modine Manufacturing Co. v. International Trade Commission, 75 F.3d 1545, 1551 (Fed.Cir.1996); see also nCube Corp. v. Seachange International Inc., 2006 U.S. App. LEXIS 631, 77 USPQ2d 1481 (Fed. Cir January 9, 2006) (71 PTCJ 268, 1/20/06) (Dyk, J., dissenting)
Technology Licensing Corp. v. Thomson Inc., 77 USPQ2d 1269, 1279 (E.D.Cal. 2005)
Id. at 1280 n15.
Id.
Id.
3M Innovative Properties Co. v. Avery Dennison Corp., 350 F.3d 1365, 1372, 69 USPQ2d 1050 (Fed. Cir. 2003)(67 PTCJ 126, 12/12/03).
Id.
See, e.g., Honeywell Inc. v. Victor Company of Japan Ltd., 298 F.3d 1317, 63 USPQ2d 1904 (Fed. Cir August 1, 2002) (language expressly requiring opaque member to be positioned to solve a first problem did not require that the opaque member must be positioned similarly situated to solve a different, second problem)
NCube Corp., 2006 U.S. App. LEXIS 631 at *28.
NCube Corp., 2006 U.S. App. LEXIS 631 at *29.
SRI International v. Matsushita Electric Corporation of America, 775 F.2d 1107, 1121, 227 USPQ 577(Fed. Cir. 1985)(30 PTCJ 645, 10/24/85),
See, e.g., Alloc Inc. v. International Trade Commission, 342 F.3d 1361, 1370, 68 USPQ2d 1161(Fed. Cir. 2003)(66 PTCJ 558, 9/19/03)(court must "look[] to whether the specification refers to a limitation only as part of less than all possible embodiments or whether the specification read as a whole suggests that the very character of the invention requires the limitation be a part of every embodiment").

Gary R. Maze is an attorney with Duane Morris' Houston office. The opinions cited herein opinions of the author and do not necessarily reflect those of his law firm.