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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].

      At first glance, the case of In re Skvorecz, appears to deal with how the transition word “comprising” is to be construed.  A closer reading reveals that the case really turns on how the word “each” is to be construed following recitation of multiple elements, in this case “a plurality of legs” or “at least two legs.”   The claim at issue in the reissue proceeding is for a table-like structure (a frame to support a chafing dish) and reads as follows:

1. A wire chafing stand comprising a first [an upper] rim of wire steel which forms a closed geometrical configuration circumscribing a first surface area, [a lower rim of wire steel forming a closed geometrical configuration circumscribing a second surface area with said first surface area being larger than said second surface area] and having at least two [a plurality of] wire legs with each wire leg having two upright sections interconnected to one another [at a location below the lower rim] in a configuration forming a base support for the stand to rest upon with each upright section extending upwardly from said base support to from an angle equal to or greater than 90° with respect to a horizontal plane through said base support and being affixed to the first [upper] rim adjacent one end thereof [and to said lower rim at a relatively equal distance below the point of attachment to said upper rim] and further comprising a plurality of offsets located either in said upright sections of said wire legs or in said first [upper] rim for laterally displacing each wire leg relative to said first [upper] rim to facilitate the nesting of a multiplicity of stands into one another without significant wedging.

Material in [brackets ] indicates Applicant’s proposed deletions and underlined material indicates proposed additions.

      The Board of Appeals and Interferences decided that in construing the claim to have its broadest reasonable  interpretation that the use of the word “each” need only refer to the “two legs” of the “at least two legs.”  The word “each” need not refer to every leg.  Thus, the Board found that the claim was anticipated by a reference that had offsets on two legs but not on every leg.

     The panel at the Federal Circuit disagreed with the Board and found the claim not to be anticipated.  Importantly, the panel reads the word “each” in this circumstance to mean “all” the legs or “every” leg.  Listen to the panel’s discussion of this issue with the counsel for the PTO:  [Here],  [Here], and  [Here].

     This decision has far-reaching effects beyond this particular case.  Moreover, while it is pro-patentee in the context of a reissue proceeding, the precedent it sets is actually anti-patentee in an infringement context.  Given the limited treatment in the opinion of why “each” must necessarily be understood to mean “all” or “every,” I think this case is ripe for en banc review.  Given the circumstances the parties have little incentive to request rehearing — the patentee has a completely favorable opinion from the Federal Circuit and the PTO is not known for being an advocate of broadly interpreted patents. 

     It seems to me that if  the word “each” has such a definite meaning in our language that the expression “each and every” would not exist.  The fact that “each and every” is a common expression suggests that the meaning of “each” is not as clear as the panel implies.  Furthermore, as counsel for the PTO remarked, if the Applicant wanted “each” to mean “all” he could have said “all.”

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

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

UPDATE:

I was curious if the Federal Circuit had ever construed “each” not to mean “all” or “every” when referring to “a plurality” or “at least two” items.  In the case of ResQNet.com v. Lansa, 346 F.3d 1374 (Fed. Cir. 2003), the panel of Judges Newman, Rader, and Michel stated that:

Claim 1 of the ’608 patent recites “each of a plurality of fields,” which does not carry the same meaning as “every field.”  Rather, the recitation of “plurality” suggests the use of “at least two.”   See York Prods., Inc. v. Cent. Tractor Farm & Family Ctr., 99 F.3d 1568, 1575 (Fed. Cir. 1996) (“The term means, simply, ‘the state of being plural.’”).  While “at least two” may mean “every” under some circumstances, the two terms are not synonymous.  In sum, “each of a plurality of fields” means “each of at least two fields.”

[Read ResQnet.com v. Lansa]