December 22, 2021
Even when they do not break significant new ground, decisions on claim construction can offer practical reminders about how the words that inventors and patent drafters choose to use in the specification – even in the title of invention – can impact the way in which a court will later construe claim language. The Federal Circuit’s decision earlier this year in Wastow Enterprises, LLC v. Truckmovers.com, Inc., 855 F. App’x 748 (Fed. Cir. May 14, 2021), is a good example of this.
Wastow reaffirms that using restrictive words like “the present invention” in a patent specification – as opposed to more open language such as “an embodiment” – could result in an implicit disclaimer of broader scope that a claim might otherwise cover. Wastow also expressly considers the title of the invention in adopting a narrow construction of the disputed claim term.
The patent involved in Wastow is titled “Universal Folding Boom Trailer.” Wastow, 855 Fed. Appx. at 749. The patent describes a towing system, and a method of loading, transporting, and delivering trucks. Id. An issue in Wastow was whether the claimed “device” in the claim element “a device removably mounted to the towing vehicle and to the towed vehicle” should be limited to a “universal folding boom trailer.” Id. at 750. The district court found that the claimed “device” was so limited. Id. The Federal Circuit affirmed.
The specification of the patent consistently described “the present invention” as a “universal folding boom trailer,” and tied the stated benefits of the invention over prior art to the use of such a device. Id. at 750-51. Examples to which the Federal Circuit pointed include descriptions like the “present invention overcomes all the shortcoming of previous methods and apparatuses by providing a new Universal Folding Boom Trailer …,” and “FIG. 2 illustrates the Universal Folding Boom Trailer 30 of the present invention legally and safely transporting two trucks….” Id. Notably, the Federal Circuit also pointed to the patent’s title (“Universal Folding Boom Trailer”) as an indication that a relevant artisan would understand that the claims require a universal folding boom trailer. Id. at 751.
Wastow is consistent with many prior cases where the Federal Circuit upheld specification-based disclaimers due to characterizations of the “invention” in the specification. See, e.g., Honeywell International, Inc. v. ITT Industries, 452 F.3d 1312 (Fed. Cir. 2006) (limiting claimed “fuel system components” to a fuel filter; relying on specification descriptions such as “[a]ccording to the present invention, a fuel filter for a motor vehicle is made from a moldable material ….”); SciMed Life Systems, Inc. v. Advanced Cardio-vascular Systems, Inc., 242 F.3d 1337 (Fed. Cir. 2001) (limiting claim to lumens that are “coaxial” rather than “dual or side-by-side;” relying on statements such as “the basic sleeve structure for all embodiments of the present invention contemplated and disclosed here”).
The Federal Circuit also distinguished Continental Circuits LLC v Intel Corp., 915 F.3d 788 (Fed. Cir. 2019), one of the cases on which the patentee relied. In Continental Circuits, the specification used the phrase “the present invention” with nonlimiting phrases such as “one technique,” “can be carried out,” and “a way,” and only in the context of a “discussion of the preferred embodiment.” Because of these nonlimiting phrases, the statements in the specification of Continental Circuits “did not characterize the present invention as a whole.” They only “disclose[d] one way to carry out the present invention.” Wastow, 855 Fed. Appx. at 752 (quoting Continental Circuits, 915 F.3d at 798).
Wastow serves as a refresher that a claim disclaimer or disavowal may arise not only from the prosecution history, but also from the specification or even the title of the patent. Practitioners should, in most situations, continue to be vigilant about referring to “embodiments” rather than “the invention.”
Author: Ray Huang