Honeywell v. ITT Industries (Fed. Cir. 2006).
On appeal of a summary judgment of noninfringement, the CAFC considered the meaning of the claim term “fuel injection system component.”
On four occasions, the specification refers to to “this invention” as relating to a “fuel filter.” And, the specification does not indicate that a fuel filter is merely a preferred embodiment.
Consequently, the CAFC concluded that the patentee limited the scope of the patent claims to require a fuel filter.
Affirmed
Notwithstanding a number of CAFC decisions on this new CAFC generated legal hazard in recent years, some patent scriveners are still doing it. Much worse, huge numbers prior patents are suffering the possibility of retroactive consequences.
That includes more than a million patents in which the scriveners followed the USPTO's own rule recommendation to use "Summary of the Invention" as a subtitle. Those who put too much detail under that subtitle and obtained [and now want to enforce] broader claims not containing some of the recited elements under that subtitle now have to face this additional case law hurdle to literal infringement claim enforcement by potential judicial claim narrowing.
Posted by: Paul F. Morgan | Jun 26, 2006 at 09:27 AM
The patent in this case is odd in that all the text (except for the abstract and claims) is included in an untitled, "DETAILED DESCRIPTION OF THE INVENTION". The patent does not have a "BACKGROUND OF THE INVENTION" section or a "SUMMARY OF THE INVENTION". The court cites against the patent holder the patent holder's use of "this invention" as in the first sentence of the patent, "This invention relates to a fuel filter for use in the fuel line that delivers fuel to a motor vehicle engine." Most patents place the first sentence of the patent under "BACKGROUND OF THE INVENTION". The patent also used "the invention" in other places, but the patent draftsperson didn't do the patent litigators any favors by failing to divide the patent into the section headings provided in MPEP 608.01(a). My guess is that the CAFC was pissed by this failure to follow the MPEP because it makes the patent office's work that much harder and the CAFC wanted to get patent practitioners to better follow MPEP 608.01(a) by citing against the patent holder a sentence that in other patents would be place under the section heading "BACKGROUND OF THE INVENTION". Anyway, to play it safe, I'm continuing to exculde the word "Invention" from my applications.
Posted by: Steve | Jun 26, 2006 at 12:07 PM
IT HAS ALWAYS BEEN LIKE THIS outside the USA. US practitioners please note; we have to spend time (and their clients' money) altering 'the invention ... ' in applications that we receive from the USA for filing in Europe or the UK to 'the preferred embodiment' or 'the apparatus/method/system illustrated' or the like. If they draft using 'the invention' to refer to the invention claimed, they will have a text much better suited to foreign filing.
Posted by: Richard Abnett | Jun 27, 2006 at 04:43 AM
never ever use broad and vague terms - this is my rule in drafting.
Posted by: Aara | Jun 27, 2006 at 08:58 PM
My personal opinion -- the inclusion of proper captions is incidental to the quality of a foreign origin (non-US) patent. What counts is the sufficiency of disclosure and claim construction. I've seen foreign origin patents that would be "non-standard" under US practice, but which are still well-written.
On a related subject, someone finally did it -- compiled a list of spammers claiming to be IP lawyers:
http://members.verizon.net/~vze2txm31/users/jez/ip_spammers.html
Xe identifies the first entry as Borat's firm. Is Very Nice!
Posted by: unitacx | Jul 20, 2007 at 12:12 AM