September 27, 2007

By David Quick

Footnote eight in Verizon Services Corp. v. Vonage Holdings Corp. (LINK, Fed. Cir. September 26, 2007) should serve as a warning to any patent prosecutor who continues to use the term "invention" in a patent specification. The safest practice, as has been adopted by many, appears to be totally avoiding the use of the term "invention" in a patent specification in any sentence that includes limiting language relating to a later claimed element.

Many patent prosecutors have completely avoided the use of the term "invention" in any patent application since Scimed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1343 (Fed. Cir. 2001) was decided for fear that limitations in the specification might be read into the subsequently issued claims. Other patent prosecutors, having read the Scimed decision in its entirety and having noticed the applicant's emphasis on the essential nature to the invention of the limitations read into the claims in that case, have sought only to limit their unrestricted usage of the term "invention" in patent applications. Such practitioners have assumed that by using the restrictive phrases "aspect of the invention" or "one embodiment of the present invention" prior to describing a limitation that is not recited in a claim, that they can avoid having that limitation read into the claim term. Under at least certain circumstances, this approach may not be effective. The CAFC in Verizon Services Corp. in interpreting the scope of the claims 1 and 6-8 in U.S. Patent No. 6,359,880 stated:

“Vonage challenges the district court’s construction of the term “localized wireless gateway system” of asserted claims 1 and 6-8 of the ’880 patent (the same term pertinent to the “few feet” limitation) on the ground that the district court erred in failing to require that the patented gateway system “compress[]/decompress[] and packetiz[e] voice signals.” Appellants’ Bf. at 26, n. 7. We agree. The “Disclosure of the Invention” section of the ’880 patent begins with a description of the gateway system of the “present invention.” ’880 patent col.4 ll.1-6. In the course of describing the “present invention,” the specification then states that “[t]he gateway compresses and decompresses voice frequency communication signals and sends and receives the compressed signals in packet form via the network.” Id. ll.12-15. When 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).8 Thus the term “localized wireless gateway system” must be limited to one performing compression and packetization functions at the gateway.”

Nothing in the above language should serve as a complete surprise to any practitioner who has followed the claim scope case law since Scimed. The patent prosecutor of the '808 patent was obviously not sufficiently clairvoyant when drafting the application in 1999 to limit the term "invention" in the manner that a proper interpretation of Scimed (decided two years later) would justify. However, footnote 8 in Verizon Services Corp., should cause prosecutors to rethink whether the restrictions they have been placing on the use of the term "invention" in recent years is adequate. In footnote 8, the CAFC stated:

“8 Verizon argues that the “present invention” language is not significant in this case because the specification merely refers to “one aspect” of “the present invention.” But that “aspect” is the “localized wireless gateway system,” the very claim term that is at issue here. See ’880 patent col.4 ll.6-7 (“Thus, in one aspect, the present invention relates to a localized wireless gateway system.”).”

In view of the dicta in footnote 8 of Verizon Services Corp., and if you are a patent practitioner, you may wish to carefully consider whether to use the term “invention” in any patent application.

David Quick is a patent attorney with Ice Miller LLP focusing his efforts on patent prosecution and general intellectual property matters.

Verizon v. Vonage Opinion: LINK
U.S. Patent No. 6,359,880: LINK
Scimed v. Advanced Cardiovascular Sys. Opinion.: LINK

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Mark Reichel
Reichel IP LLC

I am a patent attorney with Reichel IP LLC, where I concentrate my practice on patent drafting and prosecution, trademarks, and general intellectual property matters. I currently focus on the preparation and prosecution of medical device and other life sciences patent applications, and being actively involved in a number of local not-for-profit organizations.

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