In the book Drafting Patents for Litigation and Licensing (published by BNA Books and the ABA section of Intellectual Property) the authors caution that to avoid an argument that a patent specification has described an invention narrowly, patent drafters should avoid making references to specific features or aspects of “the invention” or “the present invention.” Instead, all features, aspects, and characteristics should be described as being possible or potential or exemplary embodiments of the invention.
In the recent oral argument of St. Clair Intellectual Property Consultants, Inc. v. Canon, Inc., the appellant indeed made an “aspect of the invention” argument. Judges Moore and Dyk seemed unconvinced, with Judge Moore commenting that “aspect of the invention” doesn’t necessarily require that every claim have that aspect. [Listen] Nevertheless, patent prosecutors might want to take heed that such arguments are actually being made against their work product during patent litigation and that not all judges think alike.
You can listen to the entire oral argument here: [Listen].
You can read the court’s split decision here: [Read].