Some Favorite Quotations

As someone who prepares patent opinions and drafts patent applications, I find the following quotations to be right on point.  You might enjoy them, too. 

“The specification and claims of a patent, particularly if the invention be at all complicated, constitute one of the most difficult legal instruments to draw with accuracy; and, in view of the fact that valuable inventions are often placed in the hands of inexperienced persons to prepare such specifications and claims, it is no matter of surprise that the latter frequently fail to describe with requisite certainty the exact invention of the patentee.”

Topliff v. Topliff, 145 U.S. 156, 171 (1892).


“Claim drafting is itself an art, an art on which the entire patent system today depends.  The language through which claims are expressed is not a nose of wax to be pushed and shoved into a form that pleases and that produces a particular result a court may desire.  The public generally, and in particular, the patentees’ competitors, are entitled to clear and specific notice of what the inventor claims as his invention.  That is not an easy assignment for those who draft claims, but the law requires it, and our duty demands that we enforce the requirement.”

Exxon Chem. Patents, Inc. v. Lubrizol Corp., 64 F.3d 1553, 1563 (Fed. Cir. 1995)(Plager, J. concurring).


“This court recognizes that such reasoning places a premium on forethought in patent drafting.  Indeed this premium may lead to higher costs of patent prosecution.  However, the alternative rule – allowing broad play for the doctrine of equivalents to encompass foreseeable variations, not just of a claim element, but of a patent claim – also leads to higher costs. . . .Given a choice of imposing the higher costs of careful [patent] prosecution on patentees, or imposing the costs of foreclosed business activity on the public at large, this court believes the costs are properly imposed on the group best positioned to determine whether or not a particular invention warrants investment at a higher level, that is, the patentees.”

Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1425-26 (Fed. Cir. 1997).


“These are ordinary, simple English words whose meaning is clear and unquestionable. . . . The dough is to be heated to the specified temperature. . . . Thus, in accord with our settled practice we construe the claim as written, not as the patentees wish they had written it.  As written, the claim unambiguously requires that the dough be heated to a temperature range of 400°F to 850°F.”

Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1373-74 (Fed. Cir. 2004).

“If [the patentee], who was responsible for drafting and prosecuting the patent, intended something different, it could have prevented this result through clearer drafting. . . . It would not be appropriate for us now to interpret the claim differently just to cure a drafting error made by [the patentee].  That would unduly interfere with the function of claims in putting competitors on notice of the scope of the claimed invention.”

Hoganas AB v. Dresser Indus., Inc., 9 F.3d 948, 951 (Fed. Cir. 1993).


“At best, the patent and the prosecution history show that the inventors or their representatives who drafted the claims and prosecuted the patent left considerable confusion in the record about whether the claimed invention uses heading or bearing.  However, it is not the province of the courts to salvage poorly – or incorrectly—drafted patent claims.

Fair notice to the public, and to competitors, of what is claimed depends on our holding patentees to what they claim, not to what they might have claimed.  It is the responsibility of those who seek the benefits of the patent system to draft claims that are clear and understandable.   When courts fail to enforce that responsibility in a meaningful way they inevitably contribute an additional element of indeterminacy to the system.  Sometimes being kind to a party results in being unkind to the larger interests of society.”

Honeywell International, Inc. v. Universal Avionics Systems Corp., 493 F.3d 1358, 1368 (Fed. Cir. 2007)(Plager, J., dissenting).


“This court acknowledges that the standard requiring control or direction for a finding of joint infringement may in some circumstances allow parties to enter into arms-length agreements to avoid infringement.  Nonetheless, this concern does not outweigh concerns over expanding the rules governing direct infringement. . . . The concerns over a party avoiding infringement by arms-length cooperation can usually be offset by proper claim drafting.  A patentee can usually structure a claim to capture infringement by a single party . . . .  In this case, for example, BMC could have drafted its claims to focus on one entity.  The steps of the claim might have featured references to a single party’s supplying or receiving each element of the claimed process.  However, BMC chose instead to have four different parties perform different acts within one claim. . . . Nonetheless, this court will not unilaterally restructure the claim or the standards for joint infringement to remedy these ill-conceived claims.”

BMC Resources, Inc. v. Paymentech, L.P., 498 F. 3d 1373 (Fed. Cir. 2007).


“We take the characterization ‘functional,’ as used by the Patent Office and argued by the parties, to indicate nothing more than the fact that an attempt is being made to define something (in this case, a composition) by what it does rather than by what it is (as evidenced by specific structure or material, for example).  In our view, there is nothing intrinsically wrong with the use of such a technique in drafting claims.”

In re Swinehart, 439 F.2d 210, 212 (C.C.P.A. 1971).


“A purely subjective construction of ‘aesthetically pleasing’ would not notify the public of the patentee’s right to exclude since the meaning of the claim language would depend on the unpredictable vagaries of any one person’s opinion of the aesthetics of the interface screens.  While beauty is in the eye of the beholder, a claim term, to be definite, requires an objective anchor.”

Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342 (Fed. Cir. 2005).


Most recently in Haemonetics Corp. v. Baxter Healthcare Corp., 2009-1557 (Fed. Cir. June 2, 2010), the Federal Circuit provided another quote:

 “An ‘error’ may have occurred in drafting claim 16, as Haemonetics’s counsel indicated during the district court’s claim construction hearing, J.A. 923, but it is what the patentee claimed and what the public is entitled to rely on.”

Haemonetics Corp. v. Baxter Healthcare Corp., 2009-1557 (Fed. Cir. June 2, 2010)

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