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The audio below is one of the more alarming statements that I have heard in listening to the various oral arguments from the Court of Appeals for the Federal Circuit.  It highlights the disconnect in some instances between the Federal Circuit and attorneys that draft and prosecute patent applications.  In Technology Properties Ltd. v. ARM Ltd., Judge Dyk asked appellant’s counsel about the heading “Detailed Description of the Invention” that appeared in the patent at issue.  Judge Dyk commented that this was an unusual heading and that most patents he had reviewed used “Detailed Description of the Preferred Embodiments.”  And, he implied that because language different from “Detailed Description of the Preferred Embodiments” was used in the patent at issue that the patent should be construed more narrowly [Listen].

Those comments should come as a surprise to any patent attorney who has spent any amount of time drafting patent applications and working with the Code of Federal Regulations or the Manual of Patent Examining Procedure.  The Code of Federal Regulations at 37 CFR 1.77(b)  recommends using the heading “Detailed Description of the Invention.”  Furthermore, MPEP sections 608.01(a) and 608.01(p) use the phrase as well.  In fact, MPEP section 608.01(p) is itself dedicated to the “Detailed Description of the Invention.”  Practitioners have indeed moved away from using the phrase “Detailed Description of the Invention” and often use just “Detailed Description”  — but it is disconcerting to hear this audio. 

The Federal Circuit in recent years has made a bigger deal out of phrases like “the present invention” and “the invention.”  One hopes that in doing so the judges are aware of what the PTO is recommending to patent practitioners and examiners via its regulations and the MPEP.

Inventors often emphasize that one of the distinguishing features of their invention is that it can operate in “real-time” versus the slower working of the prior art.  However, just what “real-time” entails can be quite difficult for a patent attorney to define and for the public to grasp from reading a patent’s claims, specification, and prosecution history.  In the oral argument for Netcurrents Information Services, Inc. v. Dow Jones and Co., the entire oral argument was spent trying to understand how “real-time” should be construed and whether the district court erred in its grant of summary judgment based on its construction of “real-time.”  Despite the lengthy oral argument, the Federal Circuit affirmed summary judgment in a non-precedential per curiam opinion under Federal Circuit Rule 36 (i.e., no explanation given for the affirmance). 

In addition to the fact that this oral argument highlights how difficult it can be to adequately define “real-time,” this case is also interesting in this interchange between one of the judges on the panel and counsel for the defendant/appellee where the judge recites a passage from the Summary of the patent and the attorney responds by citing a passage from the Abstract.  It should highlight to patent prosecutors the importance of those sections when drafting an application: [Listen].