Edmund C. Rogers, a well-known patent attorney in St. Louis, and a past president of the AIPLA, would often muse at lunch, “when does meat tenderizer stop working?”  A similar question might be posed about any of the qualifying language we lawyers pack into our applications and other legal writings.  In two cases this year, the Federal Circuit addressed to what the qualifications “in the preferred embodiment” and “the present invention” apply.

In Howmedica Osteonics Corp. v. Zimmer, Inc., 822 F.3d 1312 [119 USPQ2d 1290] (Fed. Cir. 2016), the Federal Circuit (O’Malley, Plager and Wallach) rejected Stryker’s arguments that the introductory clause “in the preferred embodiment” applies to not only to the sentences in which it is located, but also to the entirety of the passage. Thus it is error to import the “essentially midway” language from the specification in the claim.  The Federal Circuit disagreed, finding that “context reveals that such introductory clauses limit only the sentences in which they are located in this case.”

In Unwired Planet, LLC v. Apple Inc., 119 USPQ2d 1517 (Fed. Cir. 2016), the Federal Circuit (Moore, Bryson and Reyna), rejected the District Court’s determination that details in a paragraph of the description following a sentence that began “The present invention” became mandatory claim limitations to be read into the claims.  The Federal Circuit disagreed that “the second sentence in the summary of the invention constitutes a disclaimer that limits the scope of every claim.”

The lesson from these cases is that when you use qualifying language, you have to be clear when it applies and when it doesn’t.  You need to be clear what is part of the preferred embodiment and what isn’t.  Likewise, if you can’t resist the temptation to use “the present invention,” you have to control to when, it applies and when it doesn’t.

Controlling language is within our power, meat tenderizer on the other hand . . .