[0037]The present invention includes several independently meritorious inventive aspects and advantages. Unless compelled by the claim language itself, the claims should not be construed to be limited to structures that incorporate all of the inventive aspects, or enjoy all of the advantages, disclosed herein.
[0038]It is well established that the claims of the patent serve an important public notice function to potential competitors--enabling them to not only determine what is covered, but also what is not covered--by the patent. And a number of Federal Circuit decisions have emphasized the importance of discerning the patentee's intent--as expressed in the specification--in construing the claims of the patent.
[0039]But defendants in patent infringement suits--while arguing the importance of this public notice function--often seek strained and uncharitable constructions of the claims that would render them either nonsensical, too narrow to have any significant value, or so broad that the claim is anticipated by the prior art. Counsel for defendants routinely flog minor grammatical, typographical, or syntactical flaws, if any, in the claims or specification, forgetting that patents are generally written by--and for--engineers and technicians, not by and for grammatical perfectionists and English language PhD's. Furthermore, defendants frequently misconstrue the specification and prosecution history in claim construction briefs and hearings in an effort to import contrived and novel limitations into the construction of the claims. They also frequently strive to--in essence--rewrite the claims so that they do not cover the accused device.
[0040]Accordingly, I wish to make my intentions clear--and at the same time put potential competitors on clear public notice. It is my intent that the claims receive a liberal construction and be interpreted to uphold and not destroy the right of the inventor. It is my intent that the claim terms be construed in a charitable and common-sensical manner, in a manner that encompasses the embodiments disclosed in the specification and drawings without incorporating unrecited, unnecessary limitations. It is my intent that the claim terms be construed as broadly as practicable while preserving the validity of the claims. It is my intent that the claim terms be construed in a manner consistent with the context of the overall claim language and the specification, without importing extraneous limitations from the specification or other sources into the claims, and without confining the scope of the claims to the exact representations depicted in the specification or drawings. It is also my intent that not each and every term of the claim be systematically defined and rewritten. Claim terms and phrases should be construed only to the extent that it will provide helpful, clarifying guidance to the jury, or to the extent needed to resolve a legitimate, good faith dispute that is material to the questions of validity or infringement. Otherwise, simple claim terms and phrases should be presented to the jury without any potentially confusing and difficult-to-apply definitional construction.
My two cents: I don't expect a statement of the drafter's intent to affect how a court interprets claims. The law already allows for things like construing terms in accordance with the spec while not importing limitations from the spec, construing to avoid invalidity in some situations, etc. I don't think the patentee gets better treatment by asking for it in the spec, nor worse treatment if you don't ask.
On the other hand, seems to me that the applicant expressing his intent would undercut the Board (and the FedCircuit) from making the comment underlying its decision in Ex parte Merdan (your post on September 16th). See the end of the following exerpt:
ReplyDeleteWhere the claim merely uses the word “mechanism” as a replacement for “means,” and the claim provides no structural context for determining the characteristics of the “mechanism,” one of ordinary skill in the art has no resource but to turn to the specification to derive a structural connotation of the generically claimed “mechanism.” Welker Bearing, at 1096. This is precisely the situation 35 U.S.C. § 112, ¶ 6 was meant to address. In litigation, our reviewing court applies 35 U.S.C. § 112, ¶ 6 requirements to such claims. Id. However, the absence of the “means” language required by 35 U.S.C. § 112, ¶ 6 introduces an ambiguity into the claim. Specifically, it is not clear whether § 112, ¶ 6 applies. “When an applicant has not given notice to the public that his or her purely functional claim element is to be limited by the application of 35 U.S.C. § 112, sixth paragraph, a first USPTO concern is that the claim is indefinite under 35 U.S.C. § 112, second paragraph.”
I wouldn't call that boilerplate. Clearly some thought went into that.
ReplyDeleteOf course, if we start seeing it pop up at the end of lots of specs, then it will become boilerplate.
I agree its effect will be minimal, if not nonexistent.
>I wouldn't call that boilerplate. Clearly
ReplyDelete>some thought went into that.
Yeah, I suppose one sense of the term "boilerplate" is "written without thought". And I agree somebody thought hard about that text.
I used the term "boilerplate" in the sense of "not specific to a particular application".
Since I agree that such "stock verbiage" is not likely to have any value, I want to know if the patent attorney who put this in was consciously or unconsciously trying to make his or her client think that his fee was worth it.
ReplyDeleteThis sounds like a man that needs a rejection to me.
ReplyDeleteOn the other hand, seems to me that the applicant expressing his intent would undercut the Board (and the FedCircuit) from making the comment underlying its decision in Ex parte Merdan (your post on September 16th). See the end of the following exerpt:
ReplyDeleteWhere the claim merely uses the word “mechanism” as a replacement for “means,” and the claim provides no structural context for determining the characteristics of the “mechanism,” one of ordinary skill in the art has no resource but to turn to the specification to derive a structural connotation of the generically claimed “mechanism.” Welker Bearing, at 1096. This is precisely the situation 35 U.S.C. § 112, ¶ 6 was meant to address. In litigation, our reviewing court applies 35 U.S.C. § 112, ¶ 6 requirements to such claims. Id. However, the absence of the “means” language required by 35 U.S.C. § 112, ¶ 6 introduces an ambiguity into the claim. Specifically, it is not clear whether § 112, ¶ 6 applies. “When an applicant has not given notice to the public that his or her purely functional claim element is to be limited by the application of 35 U.S.C. § 112, sixth paragraph, a first USPTO concern is that the claim is indefinite under 35 U.S.C. § 112, second paragraph.”