“Present Invention”

Lydall/Thermal Acoustical v. Federal Mogul Corp. is yet another case in the relatively recent line of “present invention” cases.  The Federal Circuit determined that the patentee had merely described a single embodiment of the invention in the specification and relied upon the patentee’s repeated use of the phrase “the present invention” to limit the scope of the claims at issue.  The court wrote:

We agree with Federal-Mogul that the specification of the ’260 patent discloses a single embodiment of the invention, viz., an insulating shield that includes a fibrous batt consisting of an insulating layer sandwiched between two binding layers that is, as discussed infra, needled on two sides. Although Lydall is correct in saying that the claim language “fibrous batt of fibers” does not, in isolation, suggest a layered batt, Lydall’s arguments completely ignore the consistent use of the term “batt” in the specification. It is fundamental that we give due weight to the specification when construing this claim term. Phillips, 415 F.3d at 1315.

We have stated that “when the preferred embodiment is described in the specification as the invention itself, the claims are not necessarily entitled to a scope broader than that embodiment.” Chimie v. PPG Indus., 402 F.3d 1371, 1379 (Fed. Cir. 2005); see Honeywell, 452 F.3d at 1318 (construing claim term to include fuel filter because “[o]n at least four occasions, the written description refers to the fuel filter as ‘this invention’ or ‘the present invention’”); SciMed, 242 F.3d at 1343 (construing term to include feature characterized as “the present invention”). In other words, when a patentee consistently describes one embodiment as “the present invention,” “[t]he public is entitled to take the patentee at his word.” Honeywell, 452 F.3d at 1318; see also SciMed, 242 F.3d at 1341 (“Where the specification makes clear that the invention does not include a particular feature, that feature is deemed to be outside the reach of the claims of the patent, even though the language of the claims, read without reference to the specification, might be considered broad enough to encompass the feature in question.”). Such is the case here. The specification identifies a three-layered batt as “the present invention.” ’260 patent col.6 ll.50. In addition, the specification repeatedly describes the batt as having an insulating layer disposed between two binding layers. See id. col.6 ll.53–55, col.9 ll.21–25, col.13 ll.19–23. Lydall’s consistent description of “the present invention” as including a three-layered batt makes clear that the claimed “fibrous batt of fibers” must have three layers, an insulating layer sandwiched between two binding layers. The fact that the specification discloses that the insulating fibers may “at least in part” be made up of the same organic fibers as the binding layers does not dissuade us from our conclusion. It may be that the insulating layer and the binding layers are made from the same material, but the batt still has three layers. It is not, therefore, a single, homogenous layer. 

You can listen to Judge Rader inquiring about the “present invention” language [Here].   Attorneys in foreign countries should take note of this line of “present invention” cases.  Those attorneys practicing in the electrical arts in Japan, especially, would be well-advised to examine this issue before filing in the U.S.

The other issue that struck me as interesting in listening to the recording of this oral argument was Judge Rader’s inquiry about the advancement of the invention over the prior art. [Listen]   There is a tension when writing a patent application between (1) touting the benefits of an invention so that an examiner, jury, or judge will understand the value and utility of the patent, and (2) keeping the description sufficiently bland so as not to provide an adversary with any basis to limit the claims. See, e.g.Toro Co. v. Consolidated Industries, 199 F.3d 1295 (Fed. Cir. 1999); Inpro II Licensing, S.A.R.L. v. T-Mobile USA, Inc., 450 F.3d 1350 (Fed. Cir. 2006); and Vehicular Technologies Corp. v. Titan Wheel International, Inc., 212 F.3d 1377 (Fed. Cir. 2000).  This oral argument illustrates that judges do care about the utility of an invention; but, it also illustrates that one can introduce that utility at oral argument.

You can read the court’s opinion [Here].

You can listen to the entire oral argument [Here].

Comments are closed.