The Federal Circuit recently added yet another case to its jurisprudence in regard to the language “the present invention.” In Trading Technologies International, Inc. v. Espeed, Inc., 2008-1392 (February 25, 2010), Judge Rader wrote for the majority:
In the first place, the “re-centering command” must indeed occur as a result of a manual entry. The specification shows that the inventors defined the term “static” in the specification. Notably, that definition expressly promises to discuss “a re-centering command . . . later” in the specification. Id. From that point forward, the specification only discusses manual re-centering commands. The specification contains no reference to automatic re-centering. Perhaps in response to the promise to discuss re-centering later, the patents describe the invention as follows:
“As the market ascends or descends the price column, the inside market might go above or below the price column displayed on a trader’s screen. Usually a trader will want to be able to see the inside market to assess future trades. The system of the present invention addresses this problem with a one click centering feature.”
’132 patent col.8 ll.49-54; ’304 patent col.9 ll.14-19 (emphasis added). This reference to “the present invention” strongly suggests that the claimed re-centering command requires a manual input, specifically, a mouse click. See Honeywell Int’l, Inc. v. ITT Indus., 452 F.3d 1312, 1318 (Fed. Cir. 2006) (concluding that the invention was limited to a fuel filter because the specification referred to the fuel filter as “this invention” and “the present invention”).
This court recognizes that this interpretation relies heavily on the specification and risks reading improperly a preferred embodiment into the claim. See Saunders Group, Inc. v. Comfortrac, Inc., 492 F.3d 1326, 1332 (Fed. Cir. 2007) (holding that claim scope is not limited to the disclosed embodiments “unless the patentee has demonstrated a clear intention to [do so]”). This court takes some comfort against this risk from the inventors’ use of the term “the present invention” rather than “a preferred embodiment” or just “an embodiment.” The inventors’ own specification strongly suggests that the claimed re-centering feature is manual.
Judge Clark from the Eastern District of Texas sat by designation on the panel. He, too, focused on the “present invention” language in his questioning: [Listen].
You can read the court’s opinion here: [Read].
You can listen to the entire oral argument here: [Listen].