Present Invention

The case of Netcraft Corporation v. Ebay, Inc.  from December of 2008 is instructive to patent prosecutors who still use the term “present invention” in their patent drafting practice.  The defendant-appellees relied heavily on an argument that the claims of the patent at issue should be limited because of applicant’s use of the phrase “present invention.”  The plaintiff-appellant on the other hand argued that there was no general rule that use of the phrase “present invention” in the specification automatically limits the claims.

The defendant-appellee’s argument can be heard here: [Listen]

The plaintiff-appellant’s argument can be heard here  [Listen] and here [Listen].

The entire oral argument can be heard here: [Listen].

And, the Federal Circuit’s opinion can be found here: [ ] .

At the end of the day, the Federal Circuit did rely heavily on applicant’s use of present invention.  It stated:

Netcraft argues that there is no “general rule that any use of ‘the present invention’ in the specification automatically limits the claims, as Defendants seem to believe.” Appellant’s Reply Br. 22; see also id. at 19 (“Defendants contend that the case law supports the draconian result that any use of the phrase ‘present invention’ limits the claims to the embodiment described.”). We agree with Netcraft that use of the phrase “the present invention” does not “automatically” limit the meaning of claim terms in all circumstances, and that such language must be read in the context of the entire specification and prosecution history. See Rambus Inc. v. Infineon Techs. AG, 318 F.3d 1081, 1094 (Fed. Cir. 2003). For the reasons below, however, we agree with the district court that the common specification’s repeated use of the phrase “the present invention” describes the invention as a whole, see Claim Construction Order at *6, and, as will be discussed further below, that the prosecution history does not warrant a contrary result.

This oral argument might also be of interest to those familiar with the name Morgan Chu.  Mr. Chu has received accolades in years past as one of the top patent litigators in the country.  He argued for the defendant-appellee in this case.

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