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In the spirit of the holidays, I thought it might be fun to revisit a 2007 decision that involved spiral sliced ham.  The claim at issue in this case read:

A boneless sliced meat having its meat arranged in the form of a continuous spiral cut about an axis of the meat, the axis being created by temporary insertion of a support member in the meat, wherein the depth of said cut is limited to leave an uncut core of meat, said core being of sufficient cross-section to cause the boneless sliced meat to retain its shape when the support member is removed.

You can listen to the entire oral argument here: [Listen].

You can read the court’s opinion here: [Read].

One of the reasons that I enjoy listening to the recordings of the Federal Circuit oral arguments is for the creative arguments that are not eventually addressed in the court’s opinion.  Oftentimes, there is no need for the court to address these arguments in the resulting opinion because another issue on appeal makes the arguments moot.  Such was the case in Intellectual Science and Technology v. Sony Electronics, Inc., 2009-1142, (Fed. Cir. Dec. 15, 2009).

One of the issues that was on appeal in Intellectual Science and Technology v. Sony Electronics, Inc. was whether repeated use of the phrase “multitasking” in describing an embodiment in a permissive context (e.g., “capable of multitasking”, “including multitasking”, “such as multitasking”) mandated that the “multitasking” language in the preamble be considered as an element in the claim.  This is the query Judge Rader had for plaintiff-appellant’s counsel: [Listen].  And, this is the exchange between Judge Rader and defendant-appellee’s counsel on the same issue: [Listen].

The court did not have to address the issue in the opinion.  Instead, it said:

Intellectual Science also appeals the district court’s construction of the term “with multitasking function” in the preamble of claim 1 of the ’575 patent. The construction of that term, however, does not affect the issue of adequate information to create a factual issue on infringement of the “data transmitting means” in the accused devices. Because Intellectual Science did not show a genuine issue of material fact on one of the limitations in the accused devices, this court need not reach the district court’s construction of another. See TechSearch, 286 F.3d at 1371 (“To establish literal infringement, all elements of the claim, as correctly construed, must be present in the accused system.”).

 Judge Rader also noted in one of his hypotheticals that he is an ABBA and a Beatles fan.  Counsel quickly invoked the title of the song “Dancing Queen” by ABBA into his response — proving, as many have long suspected, that the rough and tumble world of patent litigation eventually turns all patent litigators into ABBA fans  [Listen].

 You can listen to the entire oral argument here: [Listen].

Akeva LLC v. Adidas-Salomon AG is a case that was decided in 2006. The oral argument took place at the University of Virginia and was very entertaining and interesting. The case turned on the claim construction of the term “secured” and whether “secured” was entitled to its broadest meaning which would include permanently secured as well as detachably secured. For example, some of the claims at issue read:

A shoe comprising:
an upper having a heel region;
a rear sole secured below the heel region of the upper; and
a flexible plate having upper and lower surfaces and positioned between at least a portion of the heel region of the upper. . . .
‘300 patent, col. 20 ll.29-43 (emphasis added).

The ‘471 patent also uses the term “secured.” For example, claim 1 states:
A shoe comprising:
an upper, and
a rear sole secured below a portion of the upper, the rear sole comprising:
a member having a top wall with a lower surface . . . the member having a bottom wall . . . the forward regions of the top and bottom walls being connected at a close end by a curved wall . . . .
‘471 patent, col. 13 ll.6-50 (emphasis added).

One of the things that I thought was interesting about this oral argument was that when Judge Rader brought up the language “the present invention” the counsel for the plaintiff-appellant cited to the Karlin Technology, Inc. v. Surgical Dynamics, Inc., 177 F.3d 968 (Fed. Cir. 1999) opinion.  [Listen] In Karlin Technology, Judge Rich wrote the following:

C. The Written Description

We conclude that the ‘247 patent’s written description does not specifically define “series of threads.” SDI argues the contrary, based on language discussing the “present invention” as having highly specialized threads. Karlin argues that this language describes the inventor’s preferred embodiment, and that “series of threads” should not be construed as limited to the preferred embodiment. An example of the disputed language in the written description follows:

BRIEF DESCRIPTION OF THE DRAWINGS

. . . .

FIG. 4 is a perspective view of a cylindrical implant and vertebra structure.

FIG. 4A is a perspective view of one preferred embodiment of the implant.

FIG. 4B is a cross sectional view of the implant of FIG. 4A.

. . . .

DETAILED DESCRIPTION OF THE DRAWINGS

. . . .

Referring to FIG. 4, a cylindrical embodiment of the present invention is shown. . . .

. . . A series of external threads 53 are formed on the circumference of the cylindrical implant 50. The threads 53 are locking threads having a series of interjections, the ends of which are blunted and twisted so as to resist unscrewing.

‘247 patent, col. 7, l. 36 – col. 8, l. 51. Figures 4, 4A, and 4B are shown below:

Although Figure 4 is expressly stated to show the “present invention,” and Figures 4A and 4B refer to “one preferred embodiment,” the same spinal implant is shown in each of the figures. The remainder of the written description has similarly mixed references to “present invention” and “preferred embodiment.” We therefore conclude that the written description uses the terms “present invention” and “preferred embodiment” interchangeably. Given this, it is clear that only the preferred embodiment is described as having highly specialized threads. The general rule, of course, is that the claims of a patent are not limited to the preferred embodiment, unless by their own language. See, e.g., Virginia Panel Corp. v. Mac Panel Co., 133 F.3d 860, 866, 45 USPQ2d 1225, 1229 (Fed. Cir. 1997) (“[I]t is well settled that device claims are not limited to devices which operate precisely as the embodiments described in detail in the patent.”). There is nothing in this case that warrants departing from the general rule. Thus, the written description does not narrow the ordinary meaning of “series of threads.”

It is interesting to hear mention of the Karlin Technology case. I did a quick Shepard’s of Karlin Technology and noted that since the opinion was written, it has not been relied upon by the Federal Circuit for this proposition.  Meanwhile, cases like Honeywell International, Inc. v. ITT Industries, Inc., 452 F.3d 1312 (Fed. Cir. 2006) have met with increasing approval.

You can listen to the oral argument in Akeva v. Adidas here: [Listen].
You can read the opinion in Akeva v. Adidas here: [Read].
You can read the opinion in Karlin Technology here: [Read].

Wireless Agents LLC v. Sony Ericsson Mobile Communications AB was decided in a non-precedential opinion back in 2006.  Despite the date and non-precedential effect, I find it to be a very interesting opinion and oral argument.  From a patent drafting perspective, it touches on a whole host of different issues: (1) narrow summary; (2) “present invention” language; (3) criticizing the prior art in the specification; (4) boilerplate; (5) non-essential claim language; (6) plain meaning of claim terms; (7) clear disavowal;  and more.

The case concerned an appeal of a district court’s refusal to grant a preliminary injunction.  The claim language at issue was the term “alphanumeric keyboard.”  The Federal Circuit determined that the term “alphanumeric keyboard” did not include a twelve key keypad that allowed keying of all the letters of the alphabet and the numbers 0-9. 

The claim at issue read as follows: 

A hand-held, electronic computing device having a physical configuration comprising:

a body portion;

a display portion pivotally coupled to the body portion;

a constantly visible display carried by the display portion;

an alphanumeric keyboard carried by the body portion;

wherein the alphanumeric keyboard is at least partially concealed by the display portion when not in use; and

wherein the display portion pivots relative to the body portion in a plane that is generally parallel with the alphanumeric keyboard.

 
Perhaps the strongest factor in favor of limiting the meaning of “alphanumeric keyboard” was the number of times that the inventor criticized or distinguished keypads in the prior art. The panel seemed to focus on this during oral argument — note also Judge Rader’s stress on the phrase the “present invention” during questioning: [Listen], [Listen], and [Listen].

Interestingly, the attorney for the patent owner argued that the “alphanumeric keyboard” language wasn’t related to the object of the invention: [Listen].

For those who remember the Federal Circuit’s odd claim construction decision in E-Pass v. 3COM, it was interesting to hear Judge Rader’s comments about that case and his dismissal of it as a pre-Phillips dictionary case:  [Listen].

You can read the court’s opinion in Wireless Agents [Here].

I posted a few weeks ago about the case In re Skvorecz in which there was a discussion about the meaning of “each” when used to refer back to a plurality of items.  [LINK]  I stumbled across an oral argument from 2006 where the panel again was trying to understand what “each” meant in this context.

The claim at issue read: 

The relevant language was “a plurality of separate patient treatment stations each having a patient support for orienting a patient in a fixed position” and “a gantry at each treatment station.”

The defendant’s attorney argued that “each” meant “every.”   Judge Linn questioned whether, in a situation where there were three patient treatment stations, “a gantry at each treatment station” could mean that only two of the treatment stations need have a gantry while the third need not necessarily have a gantry.   Judge Bryson also suggested that perhaps there was some ambiguity as to the meaning of “each.”

Here is what defendant’s counsel argued: [Listen]

Here is what plaintiff’s counsel argued: [Listen]

Ultimately, the court did not address the meaning of “each” in its opinion since the patent was found invalid.  But, if one has to argue about the meaning of “each” for six minutes of an oral argument, I would question whether “each” indeed has a common and ordinary meaning.

You can read the court’s opinion here: [Read]

You can listen to the entire oral argument here: [Listen]

Here’s an opportunity for you to be the judge.  Microsoft has appealed the permanent injunction imposed by Judge Davis of the Eastern District of Texas in i4i v. Microsoft.  Importantly, the permanent injunction would apply to any continuing infringement of US patent 5,787,449 by Microsoft’s Word product.  Judge Davis also approved $240 million in damages to i4i for infringement by Microsoft.   The Federal Circuit has issued a temporary stay of the permanent injunction pending a decision on the appeal. 

The oral argument at the Federal Circuit before Judges Schall, Prost, and Moore was conducted on September 23, 2009.  The court has not yet issued a decision.  Hence, you can decide how you would resolve this appeal.

You can listen to the oral argument below.  The oral argument was over an hour; so, I’ve divided it into three segments (1) Microsoft’s argument; (2) i4i’s argument; and (3) Microsoft’s rebuttal argument.

Microsoft’s argument: [Listen]

i4i’s argument: [Listen]

Microsoft’s rebuttal argument: [Listen]

Supporting documents including briefs and a link to the patent can be found at [Link].

In Kara Technology, Inc. v. Stamps.com, the panel reviewing the district court judgment was faced with reviewing a district court judge’s claim construction.  During the district court’s claim construction hearing, evidence from dueling expert witnesses was offered.  Judge Moore noted that the outcome of the review of the district court’s claim construction might differ depending on whether the panel reviewed the claim construction (1) de novo or (2) with deference to the district court judge’s evaluation of the expert evidence.  Judge Moore inquired of counsel for the defendant-appellee whether the court should revisit its en banc decision in Cybor v. FAS Technologies, Inc.    [Listen]  In Cybor, the Federal Circuit held that the court reviewed claim construction de novo including underlying issues of fact.

You may recall Judge Mayer’s dissent in the Phillips v. AWH Corp. case in which he commented:

Until the court is willing to reconsider its holdings in Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed.Cir.1995) (en banc), aff’d on other grounds, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996), and Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448 (Fed.Cir.1998) (en banc), that claim construction is a pure question of law subject to de novo review in this court, any attempt to refine the process is futile. Nearly a decade of confusion has resulted from the fiction that claim construction is a matter of law, when it is obvious that it depends on underlying factual determinations which, like all factual questions if disputed, are the province of the trial court, reviewable on appeal for clear error. To pretend otherwise inspires cynicism. Therefore, and because I am convinced that shuffling our current precedent merely continues a charade, I dissent from the en banc order.

On another note, it was interesting to note that Judge Moore and her clerks apparently can communicate with one another electronically during oral arguments.  [Listen]

You can listen to the entire oral argument [Here].

You can read the panel’s opinion in Kara Technology, Inc. v. Stamps.com [Here].

You can read the en banc opinion in Cybor [Here].

Edwards Life Sciences v. Cook, Inc. concerns intraluminal grafts for use in treating aneurisms without open surgery.  This case is instructive for patent attorneys on many levels.  For example, takeaway patent drafting lessons are:

1) Try to be clear when drafting an application that more than a single embodiment is being disclosed in the application;

2)  Avoid use of the phrase “the present invention” or “the invention” lest it be used against you;

3) Be aware that distinguishing prior art in the specification can be used against you;

4) Be aware that use of the abbreviation “i.e.” has the effect of defining a term rather than serving as an example.  (An example would instead be indicated by “e.g.”)

These are not new lessons; but, when they occur in the same case, they can be highly instructive.

Two issues from some of my earlier posts came up again in this oral argument.  The first was Judge Rader inquiring of counsel as to how the invention was an advancement over the prior art. [Listen]  He made the same inquiry in the oral argument of Lydall/Thermal Acoustical v. Federal Mogul Corp., as well.

The second issue was the focus by the judges on the language “present invention.”  The written opinions in “present invention” cases usually couple (1) the fact that a single embodiment was disclosed in the specification with (2) the applicant’s repeated use of the “present invention” language.  However, when one listens to the oral arguments for these cases, it is the repeated use of the “present invention” language in the specification that the judges emphasize in their questioning.  You can listen to Judge Lourie [Listen] and Judge Moore [Listen] addressing this issue with appellant’s counsel.

You can read the court’s opinion [Here].

You can listen to the entire oral argument [Here].

The general rule in patent cases before the Court of Appeals for the Federal Circuit is that no new arguments are to be presented that could have been presented at the district court. The court summarized its position on this issue last year in Golden Bridge Technology v. Nokia, where it stated:

“[I]t is the general rule . . . that a federal appellate court does not consider an issue not passed upon below.” Singleton v. Wulff, 428 U.S. 106, 120 (1976). Our precedent generally counsels against entertaining arguments not presented to the district court. Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1426 (Fed. Cir. 1997) (“In short, this court does not ‘review’ that which was not presented to the district court.”). While appellate courts are given the discretion to decide when to deviate from this general rule of waiver, see Singleton, 428 U.S. at 121, we have explained that “prudential considerations” articulated by the Supreme Court counsel against hearing new arguments for the first time on appeal absent limited circumstances, see Forshey v. Principi, 284 F.3d 1335, 1353-54 (Fed. Cir. 2002) (quoting Hormel v. Helvering, 312 U.S. 552, 556-57 (1941)).

In Forshey, this court articulated an exemplary set of limited circumstances in which hearing arguments for the first time on appeal is appropriate: (1) “[w]hen new legislation is passed while an appeal is pending, courts have an obligation to apply the new law if Congress intended retroactive application even though the issue was not decided or raised below,” 284 F.3d at 1355; (2) “when there is a change in the jurisprudence of the reviewing court or the Supreme Court after consideration of the case by the lower court,” id. at 1356; (3) “appellate courts may apply the correct law even if the parties did not argue it below and the court below did not decide it, but only if an issue is properly before the court,” id.; (4) “where a party appeared pro se before the lower court, a court of appeals may appropriately be less stringent in requiring that the issue have been raised explicitly below,” id. at 1357.

Therefore, the following exchange between counsel for the appellee and Chief Judge Michel at oral argument in Bowling v. Hasbro caught my ear. Essentially, counsel for appellee noted that the appellant was asserting a new claim construction on appeal that could have been presented below. Chief Judge Michel appeared more open to the court entertaining such a new argument than the above quote from Golden Bridge might suggest. [Listen]

You can listen to the entire oral argument  [Here].

Lydall/Thermal Acoustical v. Federal Mogul Corp. is yet another case in the relatively recent line of “present invention” cases.  The Federal Circuit determined that the patentee had merely described a single embodiment of the invention in the specification and relied upon the patentee’s repeated use of the phrase “the present invention” to limit the scope of the claims at issue.  The court wrote:

We agree with Federal-Mogul that the specification of the ’260 patent discloses a single embodiment of the invention, viz., an insulating shield that includes a fibrous batt consisting of an insulating layer sandwiched between two binding layers that is, as discussed infra, needled on two sides. Although Lydall is correct in saying that the claim language “fibrous batt of fibers” does not, in isolation, suggest a layered batt, Lydall’s arguments completely ignore the consistent use of the term “batt” in the specification. It is fundamental that we give due weight to the specification when construing this claim term. Phillips, 415 F.3d at 1315.

We have stated that “when the preferred embodiment is described in the specification as the invention itself, the claims are not necessarily entitled to a scope broader than that embodiment.” Chimie v. PPG Indus., 402 F.3d 1371, 1379 (Fed. Cir. 2005); see Honeywell, 452 F.3d at 1318 (construing claim term to include fuel filter because “[o]n at least four occasions, the written description refers to the fuel filter as ‘this invention’ or ‘the present invention’”); SciMed, 242 F.3d at 1343 (construing term to include feature characterized as “the present invention”). In other words, when a patentee consistently describes one embodiment as “the present invention,” “[t]he public is entitled to take the patentee at his word.” Honeywell, 452 F.3d at 1318; see also SciMed, 242 F.3d at 1341 (“Where the specification makes clear that the invention does not include a particular feature, that feature is deemed to be outside the reach of the claims of the patent, even though the language of the claims, read without reference to the specification, might be considered broad enough to encompass the feature in question.”). Such is the case here. The specification identifies a three-layered batt as “the present invention.” ’260 patent col.6 ll.50. In addition, the specification repeatedly describes the batt as having an insulating layer disposed between two binding layers. See id. col.6 ll.53–55, col.9 ll.21–25, col.13 ll.19–23. Lydall’s consistent description of “the present invention” as including a three-layered batt makes clear that the claimed “fibrous batt of fibers” must have three layers, an insulating layer sandwiched between two binding layers. The fact that the specification discloses that the insulating fibers may “at least in part” be made up of the same organic fibers as the binding layers does not dissuade us from our conclusion. It may be that the insulating layer and the binding layers are made from the same material, but the batt still has three layers. It is not, therefore, a single, homogenous layer. 

You can listen to Judge Rader inquiring about the “present invention” language [Here].   Attorneys in foreign countries should take note of this line of “present invention” cases.  Those attorneys practicing in the electrical arts in Japan, especially, would be well-advised to examine this issue before filing in the U.S.

The other issue that struck me as interesting in listening to the recording of this oral argument was Judge Rader’s inquiry about the advancement of the invention over the prior art. [Listen]   There is a tension when writing a patent application between (1) touting the benefits of an invention so that an examiner, jury, or judge will understand the value and utility of the patent, and (2) keeping the description sufficiently bland so as not to provide an adversary with any basis to limit the claims. See, e.g.,  Toro Co. v. Consolidated Industries, 199 F.3d 1295 (Fed. Cir. 1999); Inpro II Licensing, S.A.R.L. v. T-Mobile USA, Inc., 450 F.3d 1350 (Fed. Cir. 2006); and Vehicular Technologies Corp. v. Titan Wheel International, Inc., 212 F.3d 1377 (Fed. Cir. 2000).  This oral argument illustrates that judges do care about the utility of an invention; but, it also illustrates that one can introduce that utility at oral argument.

You can read the court’s opinion [Here].

You can listen to the entire oral argument [Here].

      At first glance, the case of In re Skvorecz, appears to deal with how the transition word “comprising” is to be construed.  A closer reading reveals that the case really turns on how the word “each” is to be construed following recitation of multiple elements, in this case “a plurality of legs” or “at least two legs.”   The claim at issue in the reissue proceeding is for a table-like structure (a frame to support a chafing dish) and reads as follows:

1. A wire chafing stand comprising a first [an upper] rim of wire steel which forms a closed geometrical configuration circumscribing a first surface area, [a lower rim of wire steel forming a closed geometrical configuration circumscribing a second surface area with said first surface area being larger than said second surface area] and having at least two [a plurality of] wire legs with each wire leg having two upright sections interconnected to one another [at a location below the lower rim] in a configuration forming a base support for the stand to rest upon with each upright section extending upwardly from said base support to from an angle equal to or greater than 90° with respect to a horizontal plane through said base support and being affixed to the first [upper] rim adjacent one end thereof [and to said lower rim at a relatively equal distance below the point of attachment to said upper rim] and further comprising a plurality of offsets located either in said upright sections of said wire legs or in said first [upper] rim for laterally displacing each wire leg relative to said first [upper] rim to facilitate the nesting of a multiplicity of stands into one another without significant wedging.

Material in [brackets ] indicates Applicant’s proposed deletions and underlined material indicates proposed additions.

      The Board of Appeals and Interferences decided that in construing the claim to have its broadest reasonable  interpretation that the use of the word “each” need only refer to the “two legs” of the “at least two legs.”  The word “each” need not refer to every leg.  Thus, the Board found that the claim was anticipated by a reference that had offsets on two legs but not on every leg.

     The panel at the Federal Circuit disagreed with the Board and found the claim not to be anticipated.  Importantly, the panel reads the word “each” in this circumstance to mean “all” the legs or “every” leg.  Listen to the panel’s discussion of this issue with the counsel for the PTO:  [Here],  [Here], and  [Here].

     This decision has far-reaching effects beyond this particular case.  Moreover, while it is pro-patentee in the context of a reissue proceeding, the precedent it sets is actually anti-patentee in an infringement context.  Given the limited treatment in the opinion of why “each” must necessarily be understood to mean “all” or “every,” I think this case is ripe for en banc review.  Given the circumstances the parties have little incentive to request rehearing — the patentee has a completely favorable opinion from the Federal Circuit and the PTO is not known for being an advocate of broadly interpreted patents. 

     It seems to me that if  the word “each” has such a definite meaning in our language that the expression “each and every” would not exist.  The fact that “each and every” is a common expression suggests that the meaning of “each” is not as clear as the panel implies.  Furthermore, as counsel for the PTO remarked, if the Applicant wanted “each” to mean “all” he could have said “all.”

You can listen to the entire oral argument [Here].

You can read the court’s precedential opinion [Here].

UPDATE:

I was curious if the Federal Circuit had ever construed “each” not to mean “all” or “every” when referring to “a plurality” or “at least two” items.  In the case of ResQNet.com v. Lansa, 346 F.3d 1374 (Fed. Cir. 2003), the panel of Judges Newman, Rader, and Michel stated that:

Claim 1 of the ’608 patent recites “each of a plurality of fields,” which does not carry the same meaning as “every field.”  Rather, the recitation of “plurality” suggests the use of “at least two.”   See York Prods., Inc. v. Cent. Tractor Farm & Family Ctr., 99 F.3d 1568, 1575 (Fed. Cir. 1996) (“The term means, simply, ‘the state of being plural.’”).  While “at least two” may mean “every” under some circumstances, the two terms are not synonymous.  In sum, “each of a plurality of fields” means “each of at least two fields.”

[Read ResQnet.com v. Lansa]

The 2007 case of  The Saunders Group v. Comfortrac is an interesting case for a number of reasons.  The patent at issue was a continuation that included claims broader than the claims of its parent patent.  The Federal Circuit had to construe the term “pneumatic cylinder” in the child patent.  Namely, the court had to determine whether the term pneumatic cylinder, as used in the child patent, was meant to include at least one pressure activated seal.  The phrase “pressure activated seal” had been used to further define “pneumatic cylinder” in the claims of the parent patent; but, the phrase “pressure activated seal” had been expressly omitted from some of the claims of the child patent.

Judge Michel first remarked during oral argument that while a continuation application might be appropriate in some situations for pursuing broader claims, it might not be appropriate in every conceivable circumstance. [Listen] 

The panel then went on to consider the effect of the Summary of the Invention section of the patent at issue.  In the patent at issue, the applicant had referred to “the invention” in the first two sentences and then referred to “embodiments of the invention” in subsequent sentences.  The panel quizzed the patentee’s attorney on the significance of that paragraph structure. [Listen] 

The exchange above is also interesting because the patentee’s attorney was able to argue that the boilerplate language appearing at the end of the patent was relevant to the meaning of the term at issue.

The court eventually held that the term “pneumatic cylinder” did not require the inclusion of a “pressure activated seal.”  Yet, the case is also interesting because the court indicated it might have reached a different decision if the term “pressure activated seal” had been omitted from all of the independent claims of the child patent rather than just some of the claims.  The court stated: “When the patentees filed the continuation application, they omitted that limitation [pressure activated seal] from some, but not all, of the new claims.  Had they omitted the limitation from all of the claims, it might be argued that the limitation was assumed to be present and did not need to be explicitly recited.  Making such a change to only some of the claims, however, is a strong indication that the claims not reciting pressure activated seals were not intended to require them.”

You can read the court’s opinion here [Read].  Again, note that this is a 2007 opinion.

The audio below is one of the more alarming statements that I have heard in listening to the various oral arguments from the Court of Appeals for the Federal Circuit.  It highlights the disconnect in some instances between the Federal Circuit and attorneys that draft and prosecute patent applications.  In Technology Properties Ltd. v. ARM Ltd., Judge Dyk asked appellant’s counsel about the heading “Detailed Description of the Invention” that appeared in the patent at issue.  Judge Dyk commented that this was an unusual heading and that most patents he had reviewed used “Detailed Description of the Preferred Embodiments.”  And, he implied that because language different from “Detailed Description of the Preferred Embodiments” was used in the patent at issue that the patent should be construed more narrowly [Listen].

Those comments should come as a surprise to any patent attorney who has spent any amount of time drafting patent applications and working with the Code of Federal Regulations or the Manual of Patent Examining Procedure.  The Code of Federal Regulations at 37 CFR 1.77(b)  recommends using the heading “Detailed Description of the Invention.”  Furthermore, MPEP sections 608.01(a) and 608.01(p) use the phrase as well.  In fact, MPEP section 608.01(p) is itself dedicated to the “Detailed Description of the Invention.”  Practitioners have indeed moved away from using the phrase “Detailed Description of the Invention” and often use just “Detailed Description”  — but it is disconcerting to hear this audio. 

The Federal Circuit in recent years has made a bigger deal out of phrases like “the present invention” and “the invention.”  One hopes that in doing so the judges are aware of what the PTO is recommending to patent practitioners and examiners via its regulations and the MPEP.