Components, parts and aspects of a device (i.e., invention) which are described as important or necessary to the invention can be used to limit the scope of the patent. When preparing a patent application, the goal is to describe an invention so that the important or necessary parts are highlighted but not necessarily described as important or necessary. In this way, aspects and embodiments of the invention can be flexibly claimed during examination. However, a component described as important and critical can be used to narrow the scope of the patent claims.
Scroll down for tips and examples of how to mitigate the risk of a ill-prepared patent application from narrowing your patent claims.
In Blackbird Tech LLC v. ELB Electronics, Inc. (Fed. Cir. 2018), the defendant attempted to narrow the scope of the claims by arguing that the specification taught a particular arrangement of the components of the patented device. The Federal Circuit reviewed the patent specification and found that the particular arrangement of parts was not “clearly” described as being “important.” As such, the Federal Circuit held that it was an error for the District Court to limit the scope of the patent to the particular arrangement based on the description of the invention, and not based solely on the language of the claims.
Fact pattern of Blackbird Tech
The patent owner (Blackbird Tech LLC) sued the accused infringer (ELB Electronics, Inc.) for patent infringement based on US Pat. No. 7,086,747. To narrow the scope of the claims, the accused infringer argued that the patent claims should be interpreted to include a requirement that the attachment surface be secured to the “ballast cover” even though the claims did not recite this arrangement. The language of the claims stated that the attachment surface is secured to the “illumination surface.”
Below is a figure from the patent which shows the attachment surface secured to the illumination surface. The ballast cover is not shown in the drawings.
Here is the accused infringer’s logic. The accused infringer pointed to the prosecution history of the patent, namely, US Pat. No. 7,086,747. Prosecution history refers to the back and forth communication between the patent owner and the examiner. In particular, when the patent application was first filed, the original claims required the attachment surface be secured to the “ballast cover.” However, in response to a rejection based on indefiniteness by the examiner, the patent owner had amended the claim to recite an attachment surface secured to “a ballast cover an illumination surface.” (markups show the amendment to the claim).
Although the opinion of the court didn’t fully explain the accused infringer’s logic, it appears that the accused infringer was arguing that the amendment to the claims were being done for the purposes of “clarification” and not to “change” the scope of the patent claim. The claim had been rejected based on indefiniteness. An indefiniteness rejection merely means that by the words of the claim, the scope of the claim is unclear and cannot be determined. As such, when the patent owner changed the claims presumably to make the language of the claims “clear,” the patent owner was not trying to “change” the scope of the claims but merely “clarify” the meaning of the words. Hence, the interpretation of the amended claims should be the same or similar to the old claims.
The Federal Circuit disagreed.
Analysis of scope of claims
The Federal Circuit recognized that limiting the claims to an attachment surface secured to the ballast cover would be importing a limitation not based solely on the claim language itself but on the specification. The language of the claims only recited that the attachment surface be secured to the illumination surface, not the ballast cover.
After a review of the patent specification, the Federal Circuit repeatedly stated that the patent specification did not describe an attachment surface secured to the ballast cover as being important or critical to the invention. As such, the Federal Circuit held that it was error to limit the claims to require the attachment surface be secured to the illumination surface.
The Federal Circuit vacated the judgement by the District Court and remanded the case for further proceedings.
Possible Lessons Learned
The way that the components, parts, aspects, and embodiments of an invention are described can have a significant negative impact on the scope of the claims of the patent. After the patent application is filed, the emphasis placed on the various parts of the invention cannot be shifted, amended or altered. As such, it is important to mitigate these risks of a limiting disclosure in the way that the invention is described in a patent application.
1. Deemphasize important and critical parts of the invention in the specification but emphasize them in the claims
If features that are described as important and critical can limit the scope of the patent, then it would be prudent to limit or not described any part of the invention as critical or important. That is sometimes difficult. Inventors might be caught up in their own invention and want to make sure that the examiner understands the critical and important parts of the invention. Certainly, the examiner needs to know what the critical and important parts of the invention are. However, the primary means to accomplish that is through the claims, not necessarily the detailed description section of the invention. The claims define what the inventor is seeking a patent for. The description informs the public what the meaning of the language of the claims.
a) Use words such as “may”
A way to mitigate placing too much of an emphasis on any part of the invention is to merely describe the device as “may” having a component. In this way, the component is described as an optional part of the inventive device, not a critical or important part of the invention. Inventors might worry that proper emphasis is not being placed on what really is the crucial part of the invention. However, they need to understand the role of the specification versus the claims. The claims draw the attention of the examiner to the critical and important inventive aspects. The specification provides written description support for the claims.
b) Use words such as “Typical”
Another method of mitigating a narrow description is to describe the feature as being preferred or typical such as a “typical or preferred adhesive.” Or, the patent specification can state that the attachment is with an adhesive but other fastening mechanism are also contemplated such as [fill in the blank].
c) Describe other ways to accomplish the same function
Sometimes a part needs to be highlighted in a patent application because it really is important and critical to the invention. Nevertheless, consider deemphasizing the important and critical part. For example, other ways may be disclosed that achieve the same part. A patent specification can describe a preferred adhesive but mention other suitable attachment mechanisms (e.g., welding, nut and bolt, etc.) to deemphasize the importance or criticality of the thing being described.
2. Identify the point of novelty properly
Not all patent applications are equal. Some cover the invention much better than others. There is no recipe or standard form for crafting a patent application. Hence, the range of quality from attorney to attorney is wide. One of the crucial steps in determining whether the patent claims well written is by reviewing how well the patent attorney you are working with identified the point of novelty.
If the point of novelty is identified properly, then all other aspects can be described as being optional. Also, the point of novelty of the invention can be highlighted but not in terms of being important or critical.
3. Do not use the word “invention” in the patent specification
In my opinion, very little good comes from referring to the product to be patented as the “invention.” Once you identify the invention then it narrows one’s understanding of what the invention is. If the patent specification describes that the invention is X, then the courts are more likely to construe the claimed invention as requiring X. Instead of using the word “invention,” the product or service can be merely identified as the product or service. For example, an inventive car can be referred to as the car having various features.
4. Examiner’s interview
During review of the prosecution history of the instant case, the Federal Circuit reviewed the indefiniteness rejection and the patent owner’s response of amending the claims to overcome the rejection. Because the patent owner did not fully explain why they made the claim amendment, the Federal Circuit did not allow them to speculate as to the reason. The Federal Circuit stated that:
“A person of ordinary skill in the art may not be able to divine what transpired between the applicant and the examiner in that interview that caused the change in claim language and scope. That is irrelevant to the issue. We look at what an ordinarily skilled artisan would understand about the claim scope from reading the prosecution history.”
The patent owner and the examiner had a telephonic interview. The exact contents of the interview was not written down or fully explained in writing. In my opinion, this is beneficial to the patent owner. Whenever you write something down, those words can and will be used against you when you assert the patent against an accused infringer or defendant.
Typically, an interview will consist of a written statement of what is to be discussed. Normally, I provide a draft response to the office action and through the interview, get feedback as to the direction that I’m trying to take the claims. The draft response might be filed and entered into the prosecution history but the back and forth discussion with the examiner is never transcribed. At most, a brief summary of the content of the interview might be written down in an interview summary which can be objected to later on if it is not accurate.
The bottom line is that the telephonic interview allows the patent owner and inventor to expedite the prosecution without having all of the words in the interview used against the inventor/patent owner later.
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.