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If somebody is looking for an article to write, I think it might be worthwhile to address the impact of 35 USC §121 on claim construction. What particularly should be addressed is: when a specification uses a phrase such as “the present invention,” should 35 USC §121 temper the impact of that language.

Historically, some patent applicants have probably innocently used the phrase “present invention” as a shorthand phrase in their specification. Moreover, the MPEP has historically counseled applicants to format their applications with phrases such as “Background of the Invention” and “Summary of the Invention.” At some point in recent history, the Federal Circuit seized on the “present invention” language in issued patents as a potentially limiting phrase. The Federal Circuit logic seems to be that an application when written can only be for one invention. So, any reference to the “present invention” impacts the claim construction. However, that logic ignores Congress’s express intent to allow there to be more than one invention disclosed in an application. Namely, 35 U.S.C. §121, the divisional statute, states:

§121. Divisional applications
If two or more independent and distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions. If the other invention is made the subject of a divisional application which complies with the requirements of section 120 it shall be entitled to the benefit of the filing date of the original application. A patent issuing on an application with respect to which a requirement for restriction under this section has been made, or on an application filed as a result of such a requirement, shall not be used as a reference either in the Patent and Trademark Office or in the courts against a divisional application or against the original application or any patent issued on either of them, if the divisional application is filed before the issuance of the patent on the other application. The validity of a patent shall not be questioned for failure of the Director to require the application to be restricted to one invention.
(July 19, 1952, ch. 950, 66 Stat. 800
 ; Pub. L. 93–596,
 §1, Jan. 2, 1975, 88 Stat. 1949
 ; Pub. L. 106–113,
 div. B, §1000(a)(9) [title IV, §4732(a)(10)(A)], Nov. 29, 1999, 113 Stat. 1536
 , 1501A-582; Pub. L. 107–273,
 div. C, title III, §13206(b)(1)(B), Nov. 2, 2002, 116 Stat. 1906
 ; Pub. L. 112–29,
 §§4(a)(2), 20(j), Sept. 16, 2011, 125 Stat. 295
 , 335.)

Notably, 35 USC 121 recognizes that the Director’s power to restrict is discretionary and that a patent may issue in which the Director did not require the patent to be restricted to one invention. So, I think an interesting article could be written discussing whether the Federal Circuit’s jurisprudence on this topic fails to take into account 35 U.S.C. §121 and divisional practice. It might also be interesting to search a database of US issued patents to see how many divisional patents contain the phrase “the present invention.”

If you’d like to listen to an oral argument where “the present invention is” language came up quite often, the oral argument in CAMPBELL SOUP COMPANY v. GAMON PLUS, INC., No. 2020-2322 (Fed. Cir. Aug. 19, 2021) would be a good one to listen to:

In the Federal Circuit’s recent opinion in CUPP COMPUTING AS v. TREND MICRO INC., No. 2020-2262 (Fed. Cir. Nov. 16, 2022), the court made a statement that caught my eye. Judge Dyk writing for the court and the other members of the panel (Judges Taranto and Stark) wrote “We now make precedential . . . .” More specifically, he wrote:

We now make precedential the straightforward conclusion we drew in an earlier nonprecedential opinion: “[T]he Board is not required to accept a patent owner’s arguments as disclaimer when deciding the merits of those arguments.” VirnetX Inc. v. Mangrove Partners Master Fund, Ltd., 778 F. App’x 897, 910 (Fed. Cir. 2019). A rule permitting a patentee to tailor its claims in an IPR through argument alone would substantially undermine the IPR process. Congress designed inter partes review to “giv[e] the Patent Office significant power to revisit and revise earlier patent grants,” thus “protect[ing] the public’s paramount interest in seeing that patent monopolies are kept within their legitimate scope.” Cuozzo Speed Techs., LLC v. Lee, 579 U.S. 261, 272, 279-80 (2016) (internal quotation marks, citation, ellipses, and alterations omitted). If patentees could shapeshift their claims through argument in an IPR, they would frustrate the Patent Office’s power to “revisit” the claims it granted, and require focus on claims the patentee now wishes it had secured. See also Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC, 138 S. Ct. 1365, 1373 (2018) (emphasis altered) (“[T]he decision to grant a patent is a matter involving . . . the grant of a public franchise. Inter partes review is simply a reconsideration of that grant.”).

That struck me as such an unusual choice of words for a court to write; so, I was curious how often the Federal Circuit uses the phrase “we now make precedential.” Interestingly, this is the only time the court has used the phrase. The CCPA never used the phrase — but, now that I think about it, due to the size of their panels, each of their opinions was precedential. And, the Supreme Court has never used the phrase. Odd.