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?” \u00a0A similar question might be posed about any of the qualifying language we lawyers pack into our applications and other legal writings. \u00a0In two cases this year, the Federal Circuit addressed to what the qualifications “in the preferred embodiment” and “the present invention” apply.<\/p>\n
In Howmedica Osteonics Corp. v. Zimmer, Inc.<\/em>, 822 F.3d 1312 [119 USPQ2d 1290] (Fed. Cir. 2016), the Federal Circuit (O’Malley, Plager and Wallach)\u00a0rejected Stryker\u2019s arguments that the introductory clause \u201cin the preferred embodiment\u201d applies to not only to the sentences in which it is\u00a0located, but also to the entirety of the passage. Thus it is error to import the “essentially midway” language from the specification in the claim. \u00a0The Federal Circuit disagreed, finding that \u201ccontext reveals that such introductory clauses limit only the sentences in which they are located in this case.\u201d<\/p>\n In Unwired Planet, LLC v. Apple Inc.<\/em>, 119 USPQ2d 1517 (Fed. Cir. 2016), the Federal Circuit (Moore, Bryson and Reyna), rejected the District Court’s determination that details in a paragraph\u00a0of the description following<\/em> a sentence that began “The present invention”\u00a0became mandatory claim limitations to be read into the claims. \u00a0The Federal Circuit disagreed that “the second sentence in the summary of the invention constitutes a disclaimer that limits the scope of every claim.”<\/p>\n The lesson from these cases is that when you use qualifying language, you have to be clear\u00a0when it applies\u00a0and when it doesn’t. \u00a0You need to be clear what is part of the preferred embodiment and what isn’t. \u00a0Likewise, 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.<\/p>\n Controlling language is within our power, meat tenderizer on the other hand . . .<\/p>\n","protected":false},"excerpt":{"rendered":" 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?” \u00a0A similar question might be posed about any of the qualifying language … Continue reading