Bottom line: It may be counter-intuitive, but use of the word “invention” when drafting a patent application is a disfavored practice. For the most part, use of the word “invention” may narrow the patent protection afforded under a patent and may not broaden the scope of the claims. The reason is that if a patent repeatedly states that the invention IS X, then courts have sometimes gone to great lengths to construe the claims so as to require X within the scope of coverage of the patent claims thereby narrowing the scope of patent protection afforded under the patent. Pacing Technologies, LLC. v. Garmin International, Inc. (Fed. Cir. 2015) is one such example.
In Pacing Tech, the invention was directed to a device that kept pace for a user participating in a sport such as running, walking, cycling, etc. The claims at issue did not expressly require the device to emit a sensible tempo (e.g., light, sound, etc.). However, due to the way the patent application was drafted, the Federal Circuit went to great lengths to interpret the claim language as implicitly requiring a sensible tempo requirement.
How did this sensible tempo requirement get into the claims? Simply put, it was through claim construction. The claim language is typically given their ordinary meaning unless the patent owner acts as his or her own lexicographer or there is a clear disavowal of subject matter. In a claim, the preamble, which is the verbiage before the words “comprising”, “consisting of” or consisting essentially of” normally isn’t a limitation to the claim. In this case, the preamble was counted as a limitation and through the preamble, the court brought in the sensible tempo requirement thereby limiting the scope of patent protection afforded under the patent.
In the instant claims, the words of the preamble provided antecedent basis for the body of the claims. As such, the court reasoned that the preamble was now a limitation that the courts needed to construe in order to determine whether the defendant incorporated the preamble’s element into its own product to determine infringement. The preamble of the claim recited “[a] repetitive motion pacing system for pacing a user …” The express language of the preamble did not include the sensible tempo requirement. However, the repetitive motion pacing system was used in the preamble of the claims and construed in light of the specification. In doing so, the court looked to whether the patent owner acts as his / her own lexicographer in defining the term “repetitive motion pacing system” or whether there was a clear disavowal of subject matter with respect to such term.
Due to the way that the patent owner (Pacing Tech.) wrote the patent specification, the district court found a clear disavowal of subject matter. In particular, the patent owner listed a number of objects of the INVENTION and stated that its device was “adapted to producing a sensible tempo.” The court read the specification as a clear disavowal of all embodiments that did not include a sensible tempo as being outside of the INVENTION.
Garmin (defendant) included a pacing feature into their products. Click the following link for a youtube demonstration of Garmin’s version of the pacing feature. Garmin’s watch displayed a target pace and immediately next to such number, Garmin placed an actual pace of the wearer. The wearer could simply compare the two pace numbers (i.e., target and actual paces) to quickly determine whether he or she was faster or slower than the target pace. Garmin did not incorporate an audible or visual indication into its watch, and thus no sensible tempo. Hence, the court affirmed the district court’s finding of no infringement.
Generally, broad stroke characterizations of the INVENTION as a whole in the patent application may not be beneficial. It is generally, but not always, better to highlight one unique aspect of the device or method instead of describing the INVENTION as being unique for having a particular feature. For example, one could describe a car having a unique type of engine (e.g., rotary engine) or a unique car having a rotary engine. In the former description, the rotary engine is the invention and any device regardless of whether it was a car would infringe. In the latter description, the car is the invention and any device not a car even though it incorporated the rotary engine would not infringe. A slight refocusing of the invention significantly broadens the patent’s specification and claims.
Although counter-intuitive, in a general sense, use of the word “invention” is not recommended in the patent specification. In most instances, the word “invention” could be replaced with the word “device”, “method”, “system”, “apparatus”, or “one aspect of the device or method” and yet retain the same meaning. In this way, the statements in the patent specification is softened by not describing an object of the invention which could tie down the invention to the stated object or goal.
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