Think Twice When Writing About the “Invention” in a Patent Application
Two recent Federal Circuit decisions emphasize that characterizing the “present invention” by using that term in a U.S. patent application specification can limit the claims according to that characterization. See AstraZeneca AB v. Hanmi USA Inc. (non-precedential) and Hill-Rom Services, Inc. et al. v. Stryker Corp. et al. However, another recent Federal Circuit case demonstrates that U.S. patent applicants can nevertheless write specifications about the “invention” that are less likely to unduly limit claims.
The Invention “Broadly Includes” or “Broadly Comprises”
While the specification stating that the “present invention” has, is, or requires certain features can limit the claims accordingly, stating that the invention “broadly includes” or “broadly comprises” certain features may not be so limiting.
In ScriptPro, the Federal Circuit reversed a decision of summary judgment on the basis that the claims at issue did not lack written description support under pre-AIA § 112, first paragraph (now § 112(a)). Although all the embodiments described in the specification required sensors, the claims at issue not requiring sensors were not fatal for written description purposes. One of the key aspects that the Federal Circuit cited in support of its decision was the specification merely identifying features that the invention “broadly includes” or “broadly comprises.”
It may therefore be beneficial for applicants to characterize the invention as “broadly including” or “broadly comprising” certain features in order to avoid limitations from the specification being read into the claims as a required part of the “invention” defined by the claims. Other terms may be just as useful in avoiding examples from the specification being read into the claims, such as by stating that “at least some embodiments” of the invention include a certain feature, thereby indicating that the feature is not necessarily a required feature.
Why Mention the “Invention” at all?
It is difficult to imagine that any patentee would like to endure the high costs of litigation to rebut a defendant’s arguments as to what the term “invention” indicates in the patent being asserted. In order to avoid these arguments and to avoid any limitations from the specification being read into the claims, it may be best to not mention the “invention” at all in the specification, “broadly” or otherwise. After all, if the specification does not specifically delineate features that the “invention” even broadly includes or comprises, then those features cannot be read into the claims purely on the basis of the specification’s plain language.
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