Wednesday, August 19, 2009

Words not to use in Patent Applications

“The invention …,” essential, must, needed, desirable, usual, correct, required requirement, laborious, expected, never, must, significant, majority, peculiar, most, should, surely, none, only, rarely, "limited success with," "free of," "substiantially free of," typically, highly, absolutely, frequently, difficult, conveniently, "time consuming," commonly, generally, uncommon, usually, few, "as much as," "substantially XXX," "majority of XXXX," special, "fully", "clearly", "concisely" and "exactly." Some of then are not really NO NO, but I would think that if you use them, you better have a definition somewhere.

With respect to "surprisingly discovered," see Purdue Pharma L.P., et al. v. Endo Pharmaceuticals, Inc., et al.

With respect to "standard," "conventional,"
"normal," see PC Connector Solutions LLC v. Smartdisk. Claim terms such as "standard", conventional", and "Normal" limited the claim limitations "to technologies existing at the time of the invention."

With respect to "at least one of A, B, C, D, and E" -- not a NO NO, but proceed with caution with the rather screwy case, SuperGuide Corp. v. DirecTV Enters., Inc., 211 F. Supp. 2d 725

With respect to "contain" or "containing" not a NO NO, but why bother, why not just use "comprise" or "comprising" to avoid disputes down the road. See Mars, Inc. v. H.J.Heinz Co. 03-1617

from htp here

Regarding negative implications arising out of use of the term "invention" in the specification, see, e.g., Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1308 (Fed. Cir. 2007) ("[w]hen a patent thus describes the features of the 'present invention' as a whole, this description limits the scope of the invention."); Honeywell Int’l, Inc. v. ITT Indus., 452 F.3d 1312, 1318-19 (Fed. Cir. 2006); Scimed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1343 (Fed. Cir. 2001) (“[T]he characterization of the coaxial configuration as part of the ‘present invention’ is strong evidence that the claims should not be read to encompass the opposite structure.”); see also Andersen Corp. v. Fiber Composites, LLC, 474 F3d 1361, 1368 (Fed. Cir. 2007) (specification’s description of a “critical element” found limiting).

But in partial support of Mr. Cole's second posting, see Praxair, Inc. v. ATMI, INC., No. 2007-1483 (Fed. Cir. 9/29/2008) (Fed. Cir., 2008):
However, it is generally not appropriate “to limit claim language to exclude particular devices because they do not serve a perceived ‘purpose’ of the invention. . . . An invention may possess a number of advantages or purposes, and there is no requirement that every claim directed to that invention be limited to encompass all of them.” E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1370 (Fed. Cir. 2003) (citation and footnote omitted); see also Howmedica Osteonics Corp. v. Wright Med. Tech., Inc., No. 2007-1363, 2008 WL 4072052, at *6 (Fed. Cir. Sept. 2, 2008) (quoting and applying E-Pass). The language here does not suggest that each embodiment of the invention must serve the uniformity objective.

But nearly all of the parts of the specification that discuss uniform capillaries cover only specific embodiments of the invention of the ’609 patent and not the invention as a whole. As such, these parts of the specification are not properly construed as limiting the meaning of the claim language. Computer Docking Station Corp. v. Dell, Inc., 519 F.3d 1366, 1374 (Fed. Cir. 2007).

The exception is statements such as the language in the Summary of the Invention section of the ’609 specification that “[t]he apparatus of this invention provides a flow restrictor in the storage container in the form of a tube having multiple uniformly shaped capillaries . . . .” ’609 patent col.3 ll.54-56. A somewhat similar statement appears in the Detailed Description of the Preferred Embodiments. See id. col.7 ll.27-29 (“A useful feature of this invention is the provision of the essentially round outer
cross section of the tube with the relatively uniform internal capillary passages.”); see also id. col.9 l.66-col.10 l.9 (“A number of other forming techniques and material properties can be important to obtaining a uniform multi-capillary structure. . . . Uniformity of the resulting capillaries also improves as the alignment of the conduits in the drawing stock becomes more parallel.”).

Although these statements appear to pertain to the invention overall, rather than a specific embodiment of the invention, they are contradicted by a number of express statements in the ’609 specification clearly indicating that uniformity of the capillary tubes is a feature only of certain embodiments, and not of all embodiments, of the invention. The Summary of the Invention states “in a limited apparatus embodiment this invention is an apparatus for controlling the discharge of pressurized fluids . . . . The apparatus comprises . . . [a] tube defining multiple and uniformly sized capillary passages . . . .” Id. col.4 l.66-col.5 l.17 (emphasis added). Another passage from the Summary of the Invention confirms this understanding, describing capillary uniformity as an aspect of “a broad embodiment [of] this invention”. Id. col.4 ll.22-34 (emphasis added). Likewise, the Detailed Description of the Preferred Embodiments section of the specification explains that “[t]he preferred structure of this invention is a uniform multi-capillary assembly that virtually eliminates the presence of irregular capillaries. . . . The most preferred

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