Avoid disparaging prior art in patent application

Updated: January 20, 2022

Disparaging the prior art in the patent application may narrow patent claims

When a patent application disparages a prior art technique, feature, aspect, or apparatus, the court may assume that there is a disclaimer of the disparaged subject matter and may then narrow the scope of the claims to exclude the disparaged subject matter if and when the patent application matures into a patent.  In Ultimate Pointer LLC v. Nintendo Co. Ltd. (Fed. Cir. 3/1/16), the court construed the claim phrase “handheld device” (i.e., handheld pointing device), which on its face would appear to include both direct and indirect handheld pointing to device, to exclude indirect pointing devices because the patent application was drafted to repeatedly disparage indirect pointing devices.

Other ways of introducing disparaging comments about prior art

Instead of disparaging the prior art in the patent application, the patent application should be drafted to focus on the benefits of the present invention.  There is little or no need to highlight the deficiencies of the prior art through the patent application.  The disparaging information can be presented to the patent examiner through other means after filing the patent application.  Also, these other ways may have a less potential impact on claim scope.  For example, the disparaging information could be contained in a response to an office action, submitted in an information disclosure statement, and/or presented to the examiner during an examiner’s interview.  These means of presenting information to the examiner allow the inventor to present the information through attorney argument and without a declaration by the inventor.

In contrast, when a patent application is filed, it is submitted with a declaration wherein the inventor states under penalty of perjury that:

I hereby state that I have reviewed and understood the contents of the above identified application, including the claims, as amended by any amendment specifically referred to above.

As such, statements and comments made in the patent application are given more weight than statements made by an attorney.

Ultimate Pointer case

Ultimate Pointer illustrates the disadvantages of disparaging the prior art in a patent application.    In Ultimate Pointer, the patent application disparaged the prior art and it was this patent application that matured into the patent at issue.  The patent owner (Ultimate Pointer) patented a handheld pointing device to control a cursor during a presentation.

Definition of direct pointing device

The patent distinguished direct pointing devices and indirect pointing devices.  The patent specification defined direct pointing devices as devices wherein the physical point of aim coincides with the item being pointed such as laser pointers. Direct pointing devices also interacted with the screen itself.  The patent touted the benefits of direct pointing devices.

Definition of indirect pointing device defined

Indirect pointing devices are those devices wherein the physical point of aim does not coincide with the item being pointed such as a computer mouse.  Indirect pointing devices do not interact with the screen.  The patent specification disparaged indirect pointing devices.

Wii gaming console

Nintendo sells Wii gaming consoles with a handheld pointing device.  I own a Wii gaming console.  Some of the games use the handheld device in a manner where the device does not point toward the screen.  For example, the tennis game requires the user to point the Wii handheld device away from the screen.  Other games and the setup require the user to point the Wii handheld device toward the screen and point to various items.  But it turns out that while the handheld device is pointed toward the screen, the Wii handheld device does not directly interact with the screen and instead interacts with a sensor positioned in front of the screen.

Ct. found that handheld devices for pointing exclude indirect pointing devices

To broaden the scope of patent claims to include the Wii handheld device, Ultimate Pointer had argued that the plain meaning of “handheld device” encompassed the Wii pointer but the court disagreed.  Due to the extensive disparaging comments at every turn in the specification which disparaged indirect handheld pointing devices, the court found that “handheld device” did not include indirect pointing devices like the Wii pointer.  The patented pointing device required a direct pointing device involving direct interaction between the screen and the handheld device and excluded the disparaged indirect pointing devices.

Wii gaming console uses an indirect pointing device

The Wii gaming console does not work based on direct interaction between the TV screen and the Wii handheld pointing device.  Rather, the Wii handheld device interacts with a sensor bar (not a TV screen) positioned in front of the TV screen.  Thus, the Wii handheld device is not a direct pointing device because the cursor on the TV screen is based on an indirect relationship between the Wii handheld device and the screen via the sensor bar even though it may create the illusion of direct pointing.

Patent specification repeatedly disparaged indirect pointing devices

The disparaging comments regarding indirect pointing devices permeated the patent specification.  The patent’s title of the patent referred to the direct pointing aspect.  The specification repeatedly stated that the disclosed system is for interacting with a presentation in a direct pointing manner.   It also emphasized that direct pointing was superior to indirect pointing.  It characterized indirect pointing as less than natural.  The specification included one embodiment directed to an indirect pointer but indicated that indirect pointing is only used when direct pointing is not possible or not desired.

Ways to include disparaging comments while mitigating the adverse impact to claim scope

Instead of disparaging the prior art in the specification, inventors may present the same information to the examiner without such a severe impact by presenting the same information in a response to an office action, in an information disclosure statement, or even during a telephonic interview with the examiner.  These other means of introducing information may have a less adverse impact on the scope of the claims.  Interviews are often merely summarized so that information presented during the interview is often not even mentioned in the prosecution history, and if mentioned, are summarized so the patentee’s complete comments seldom appear in the patent’s prosecution history.  Further, comments in Amendments responding to an Office Action are seldom made with a declaration and may often be characterized as attorney argument.  Thus, it is useful for patent drafters to recognize that disparaging the prior art may limit the patent claims and proceed accordingly.

I invite you to contact me with your patent questions at (949) 433-0900. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego, and surrounding cities.