Using non-committal terms such as “preferred” and “substantially” broadens the description and claim language. Stating that an embodiment of an invention is “preferred” implies that the inventor has contemplated variations, but thinks this version is best.
The usefulness of broadening claims with these terms is illustrated in the case of Verderi, LLC v. Google, Inc.42 Verderi (patent owner) sued Google for patent infringement, complaining that Google’s “Street View” infringed on its own patented technology that was directed to providing synthesized images of a geographic area that a user navigates online. In Google’s application, the internet user can pan left, right, up, and down to view the surrounding scenery. Google’s infringement hinged on whether Verderi’s claim, which included the phrase “substantial elevations,”43 meant that only vertically flat depictions of the objects were protected by the patent, or that “substantially elevations” could also include curved or spherical depictions. The District Court construed the phrase as excluding44 curved or spherical depictions of the objects. Since Google’s Street View included spherical depictions, the District Court granted summary judgment in favor of Google, which was found to not infringe Verderi’s patent claims.
On appeal, the Federal Circuit reversed this ruling, deciding that the District Court had erroneously interpreted Verderi’s claims as excluding the possibility of curved or spherical depictions even though the specification and prosecution history of Verderi’s patents had allowed for the possibility of curved or spherical depictions. In addition, the patent owner did not clearly disavow inclusion of curved or spherical depictions due to their use of the adverb “substantially.” This term reflected an intent to include something more than just an elevation view, namely, curved or spherical depictions. The Federal Circuit reasoned that the word “substantially” broadened the term “elevation” to include curved or spherical depictions, reversed the District Court’s claim construction, vacated its judgment of non-infringement, and remanded for further consideration. In this instance, the claim was considered sufficiently broad to encompass Google’s “Street View” and was saved because the term “substantially” modified the term “elevation” to include more than its strict, architectural sense, namely, curved and spherical depictions.
43. Elevation refers to a type of view, such as top view, side view, bottom view, etc. An elevation view generally refers to a two-dimensional drawing of the front and sides of a building used in architectural drawings
44. Meaning the scope of the claims does not include curved or spherical depictions. If the phrase “substantially elevations” excludes curved or spherical depictions and an accused infringing device includes curved or spherical depictions, the latter does not infringe on the claim. Conversely, if the phrase “substantially elevations” can include curved or spherical depictions and if an accused infringing device includes curved or spherical depictions, the latter infringes on the claim.