{"id":368,"date":"2009-08-13T00:28:02","date_gmt":"2009-08-13T06:28:02","guid":{"rendered":"http:\/\/www.717madisonplace.com\/?p=368"},"modified":"2009-08-13T00:29:47","modified_gmt":"2009-08-13T06:29:47","slug":"summary-of-the-invention","status":"publish","type":"post","link":"https:\/\/www.717madisonplace.com\/?p=368","title":{"rendered":"Summary of the Invention"},"content":{"rendered":"

The 2007 case of\u00a0 The Saunders Group\u00a0v. Comfortrac<\/span> is an interesting case for a number of reasons.\u00a0 The patent at issue was a continuation that included claims broader than the claims of\u00a0its parent patent.\u00a0 The Federal Circuit had to construe\u00a0the term “pneumatic cylinder” in the child patent.\u00a0 Namely, the court had to determine whether the term pneumatic cylinder, as used in the\u00a0child patent, was meant to include at least one\u00a0pressure activated seal.\u00a0 The phrase “pressure activated seal” had been used to further define “pneumatic cylinder” in the claims of the parent patent; but, the phrase “pressure activated seal” had been expressly omitted from some<\/span> of the claims of the child patent.<\/p>\n

Judge Michel first remarked during oral argument that while a continuation application might be appropriate\u00a0in some situations for pursuing broader claims, it might not be appropriate in every conceivable circumstance. [Listen<\/a>]\u00a0<\/p>\n

The panel then went on to consider the effect of the Summary of the Invention section of the patent at issue.\u00a0 In the patent at issue, the applicant had referred to “the invention” in the first two sentences and then referred to “embodiments of the invention” in subsequent sentences.\u00a0 The panel quizzed the patentee’s attorney on the significance of that paragraph structure. [Listen<\/a>]\u00a0<\/p>\n

The exchange above is also interesting because the patentee’s attorney was able to argue that the boilerplate language appearing at the end of the patent was relevant to the meaning of the term at issue.<\/p>\n

The court eventually held that the term “pneumatic cylinder” did not require the inclusion of a “pressure activated seal.”\u00a0 Yet,\u00a0the case is also\u00a0interesting because the court indicated it might have reached a different decision if the term “pressure activated seal” had been omitted from all<\/span> of the independent claims of the child patent rather than just some<\/span> of the claims.\u00a0 The court stated: “When the patentees filed the continuation application, they omitted that limitation [pressure activated seal]\u00a0from some, but not all, of the new claims.\u00a0 Had they omitted the limitation from all of the claims, it might be argued that the limitation was assumed to be present and did not need to be explicitly recited.\u00a0 Making such a change to only some of the claims, however, is a strong indication that the claims not reciting pressure activated seals were not intended to require them.”<\/p>\n

You can read the court’s opinion here [Read<\/a>].\u00a0 Again, note that this is a 2007 opinion.<\/p>\n","protected":false},"excerpt":{"rendered":"

The 2007 case of\u00a0 The Saunders Group\u00a0v. Comfortrac is an interesting case for a number of reasons.\u00a0 The patent at issue was a continuation that included claims broader than the claims of\u00a0its parent patent.\u00a0 The Federal Circuit had to construe\u00a0the term “pneumatic cylinder” in the child patent.\u00a0 Namely, the court had to determine whether the […]<\/p>\n","protected":false},"author":1,"featured_media":0,"comment_status":"closed","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[4],"tags":[],"_links":{"self":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/368"}],"collection":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/users\/1"}],"replies":[{"embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=368"}],"version-history":[{"count":18,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/368\/revisions"}],"predecessor-version":[{"id":388,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/368\/revisions\/388"}],"wp:attachment":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=368"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=368"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=368"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}