The scope of protection provided by a patent has been severely curtailed by a number of recent decisions from the U.S. Court of Appeals for the Federal Circuit (CAFC). While these decisions bode well for potential infringers, they offer virtually no protection to the patent owner beyond the specific embodiments disclosed in the specification. Additionally, these decisions provide little guidance to patent owners in infringement analyses. Hence, the patent attorney is now required to consider a multitude of additional issues when preparing every patent application, thereby increasing the cost and time associated with patenting an invention.

The problem is best exemplified in Bell Atlantic Network Systems, Inc. v. Covad Communications Group, Inc., No. 00-1475 (Fed. Cir., August 17, 2001). In Bell Atlantic, the CAFC held that, by using the term "mode" consistently throughout the specification, Bell Atlantic was confined to the meaning of the term as it was redefined "by implication" in the specification. Moreover, since the patentees consistently described a first (upstream) and second (downstream) data channel as being unidirectional, the court concluded that the term "channel" was limited to only "unidirectional" communications. Additionally, the court held that, since the first and second channels were consistently described in the specification as an amount of bandwidth separated by frequency, the term "channel" meant only "frequency" channels. Thus, despite recognizing the ordinary meaning of "channels" to include separations created by time division multiplexing, echo cancellation, or other common modulation techniques, the court redefined the term "channels" to include only "frequency" channels.

While courts routinely look to the specification to interpret claim language, Bell Atlantic marks the first time when the court redefined a claim term primarily due to "consistent usage" of descriptive language in a preferred embodiment. In other words, Bell Atlantic marks the first time that the court primarily relied on the specification to implicitly redefine a well-known claim term. Hence, as a consequence of Bell Atlantic, the use of consistent terms to describe various features of a "preferred" embodiment may unintentionally limit the breadth of an otherwise well-recognized, ordinary definition of a claim term.

At first inspection, the result in Bell Atlantic may seem logical. After all, a patentee may choose to be his own lexicographer, thereby using a term in a manner that is different from its ordinary meaning. Vitronics, 90 F.3d at 1582, 39 USPQ2d at 1576. Hence, the court must examine the intrinsic evidence to determine whether the patentee has applied an unconventional meaning to a claim term. Hockerson, 222 F.3d at 955, 55 USPQ2d at 1490. In this regard, the specification may act as a dictionary "when it expressly defines terms used in the claims or when it defines terms by implication." Vitronics, 90 F.3d at 1582, 39 USPQ2d at 1577. "Thus, the specification is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term." Id.

However, the reasoning applied in Bell Atlantic has no practical or logical limit. If consistent usage of terminology creates a "definitional hook" for courts to import any limitation from the specification, then courts may import as few or as many details as necessary to completely redefine the scope of a patent. Unfortunately, while very careful patent drafters may be able to circumvent some of the definitional narrowing, as discussed below, narrowing based on "consistent usage" is practically unavoidable. Thus, patent drafters are generally helpless against this latest attack on our peripheral claiming system.

Broadly speaking, it seems as if the CAFC is focused on developing a body of patent law that provides public notice only as to the maximum breadth of claim protection without regard to the equally important, if not more important, need for public notice of the minimum scope of claim protection that will be upheld for patent owners. Evidence of the import which the court places on this one-sided public notice can be found in Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583, 39 USPQ2d 1573, 1577 (Fed. Cir. 1996). In Vitronics Corp., the court stated that an important consideration in claim construction was whether the patent provides adequate notice to the public of the proposed claim construction. While the present trend conforms with the goal of the CAFC to breathe certainty into the body of patent law, a vast majority of recent CAFC decisions regarding claim interpretation have undermined public confidence in the ability of the patent system to protect innovation.

The current trend of CAFC holdings has stayed the course regarding the policy of supporting public notice as to the maximum limits of a patent claim, such as when the doctrine of equivalents does not apply to enhance the literal scope of a claim limitation. See e.g., Festo v. Shoketsu Kinzoku Kogyo Kabushiki, F.3d (Fed. Cir. 2000). In Festo, the court made it clear that narrowing claim amendments, made for purposes of patentability, would eliminate all equivalents to the amended claims under the doctrine of prosecution history estoppel.

Regardless of how positive the "narrowing" trend may seem from the perspective of the public, the trend exposes patent owners and inventors to potential infringers, thereby leaving them with little protection and even less guidance on how to prevent infringement due to the eroding scope of their patent claims. Unfortunately, patent owners are placed in the unenviable position of having little or no notice as to where the claim erosion might end. In order to make an informed decision on whether to invest resources in procuring a patent for a particular invention, patent owners and inventors need to have an indication of both the minimum and the maximum scope of protection.

The United States has not always had a peripheral claiming system. According the Supreme Court in Markman v. Westview Instruments, 517 U.S. 370 (1996):

Prior to 1790 nothing in the nature of a claim had appeared either in British patent practice or in that of the American states," Lutz, Evolution of the Claims of U. S. Patents, 20 J. Pat. Off. Soc. 134 (1938), and we have accordingly found no direct antecedent of modern claim construction in the historical sources. Claim practice did not achieve statutory recognition until the passage of the Act of 1836, Act of July 4, 1836, ch. 357, §6, 5 Stat. 119, and inclusion of a claim did not become a statutory requirement until 1870, Act of July 8, 1870, ch. 230, §26, 16 Stat. 201; see 1 A. Deller, Patent Claims §4, p. 9 (2d ed. 1971).

Thus, the present erosion of our peripheral claiming system is nothing short of a regression back to the problems of unpredictability that characterized our very early patent system. The claims in a patent had since become equivalent to the "metes and bounds" description of a plat of land in a real estate deed, while the specification was free to fully enable the invention. Thus, under the peripheral claiming system, the claims described the scope of the invention introduced in the patent so that patentees and third parties could reliably determine the boundaries over which the third parties were not to trespass. Thus, since the early days, an infringement analysis was primarily directed at the claims, and only under limited circumstances would the analysis stray from an evaluation of the specific language of the claims.

Until most recently, a patent specification was not intended to define the scope of an invention. Defining the scope of the invention was the purpose of the claims. Significantly, the specification of the patent must provide sufficient information to enable a person of ordinary skill in the art to make and use the invention and set forth the best mode contemplated by the inventor. As a result, a majority of inventors and patent attorneys presently draft patents that include a set of figures and a detailed description focused on enabling the best mode of practicing the invention. Patent attorneys then present peripheral claims with the focus on defining the "metes and bounds" of the invention.

In the past, the specification was consulted to assist in the interpretation of claims under three primary conditions. First, the specification was consulted when a term used in a claim was ambiguous. Second, the specification was consulted when the applicant had acted as a lexicographer to explicitly redefine a word. Third, under 35 USC § 112, paragraph 6, the specification was consulted when an applicant expressed a particular claim element as a "means for" or "step for" performing a particular function. While it was once settled law that the specification would rarely be used to significantly narrow claim terms outside these exceptions, the CAFC now routinely consults the patent specification to establish more narrow "definitions" of claim terms. While the first condition listed above, the "ambiguous" terminology situation, is clearly an exception that could also easily swallow the rule if not appropriately applied, the latest implicit redefinition practices strike at the very heart of the peripheral claiming system.

Two lines of case law exist regarding the process of interpreting claims. For example, in the case of Gart v. Logitech, 59 USPQ2d 1290 (Fed. Cir. 2001), the court relied on the more traditional process of first pointing out that claim terms are given their ordinary and customary meaning unless the patentee has deliberately chosen to be his or her own lexicographer, or the claim lacks sufficient clarity such that there is no means by which the scope of the claim may be ascertained from the language used. On the other hand, other panels of the CAFC refuse to give any real attention to ordinary and customary meaning, and look primarily within the four corners of the application and the prosecution history to "define" the claim terms, thereby interpreting the claims "in view of" the specification. See, e.g., Solomon v. Kimberly Clark, No. 97-1571 (Fed. Cir. May 26, 1998)(unpublished); Unique Coupons v. Northfield, No. 00-1300 (Fed. Cir. June 13, 2001)(unpublished).

This second or intrinsic approach to claim interpretation is in line with the court's holding in Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996), where the court stated, "[i]n construing a claim limitation, we look to the claim language, the written description, the prosecution history, and, if necessary, extrinsic evidence." Additionally, in Hoechst Celanese Corp. v. BP Chems, Ltd.M 78 F.3d 1575 (Fed. Cir. 1996), the court added that "it is always necessary to review the specification to determine whether the inventor has used any terms in a manner inconsistent with their ordinary meaning. The specification acts as a dictionary when it expressly defines terms used in the claims or when it defines terms by implication." It is the reach of this "implicit" definitional analysis that seriously undermines our peripheral claiming system.

A review of recent CAFC holdings in the area of claim interpretation indicates that, until Bell Atlantic, patentees could obtain at least a limited visibility into avoiding or diminishing the specification-based redefining of claim terms. In this regard, outside the well-recognized exceptions to using only the ordinary meaning of the claim terms (i.e., ambiguous claim language, explicit redefinition, and 35 U.S.C. § 112 ¶ 6), inventors could identify several other specification-based redefinitions and proceed with caution. These problems of specification-based redefinitions, which are discussed in greater detail below, arise in the context of: unqualified "invention" statements; Summary of the Invention; Abstract of the Disclosure; alternative embodiments; prior art distinctions; claim language; and statements of "significance." By no means is the present article intended to be an exhaustive list of categories or cases where the court has redefined claims "in light of the specification." It is merely a sampling to point out how Bell Atlantic departs dangerously from at least some of the more avoidable redefinition categories.

The avoidance of closed-ended expressions has always been important for patentees. For example, statements regarding "the invention" or "all embodiments of the invention" have been interpreted to expressly limit the claims. See, e.g., SciMed Life Systems v. Advanced Cardiovascular Systems, No. 99-1499 (Fed. Cir., March 14, 2001). Thus, it is important to include qualifying and open-ended statements, such as "one embodiment of the invention, among others." While such "broadening" language may not always have the intended effect of broadening the scope of the invention, it may at least help in preventing a court from narrowing the scope of protection from statements that appear to be all-encompassing.

The court has placed great weight on statements in the Summary of the Invention section of the respective patents. See, e.g., Solomon v. Kimberly Clark, No. 97-1571 (Fed. Cir. May 26, 1998)(unpublished); Unique Coupons v. Northfield, No. 00-1300 (Fed. Cir. June 13, 2001)(unpublished). Other decisions have also relied, at least in part, on the Summary of the Invention to severely restrict the scope of patent claims. These cases include SciMed and Bell Atlantic. Since the Summary of the Invention section is not a required section for patent applications, serious consideration should be given to omitting the Summary section entirely in view of these and other decisions. In fact, it is reported that Motorola, for many years, has omitted the Summary of the Invention in most of its patents. If patentees still choose to include a Summary section in their applications, the Summary should mirror the broadest claims and should be amended after prosecution to reflect any claim amendments.

Some panels of the CAFC have also based their decisions on the Abstract of the Disclosure section of patents. See, e.g., Unique Coupons v. Northfield, No. 00-1300 (Fed. Cir. June 13, 2001)(unpublished); Space Systems/Loral, Inc. v. Lockheed Martin Corp., Nos. 99-1255, 99-1289 (Fed. Cir., Aug. 23, 2000)(unpublished); Hill-Rom Co. v. Kinetic Concepts, Inc., 209 F.3d 1337, 1341, 54 USPQ2d 1437, 1440 n. 1 (Fed. Cir. 2000). Since the Abstract is a required section, applicants should concentrate on including very little in the Abstract. At most, the Abstract should include only the broadest independent claim. Like the Summary section, the Abstract should be reviewed and amended where necessary to reflect the scope of any amended claims.

The disclosure of alternative embodiments also continues to be very important. For example, in Unique Coupons, the court held that, since the specification only disclosed one embodiment, the claims would "require" the limitations associated with that one embodiment. As previously described in reference to Bell Atlantic, supra, disclosing only one embodiment in a consistent manner serves to "implicitly define" claim terms. Clearly, the inclusion of alternative embodiments for important claimed limitations is an important patent drafting consideration. It will probably not be enough to simply include boilerplate statements regarding other unidentified embodiments, or to simply use permissive language regarding the limitations such as "e.g.," "may," or "can." However, the use of such open-ended phrases may prove particularly useful when alternative embodiments are disclosed.

Unfortunately, unless done carefully, the listing of alternative embodiments may actually backfire and create even narrower definitions for claim terms. See, e.g., O. I. Corp. v. Tekmar Company, Inc., 115 F.3d 1576, 42 USPQ2d 1777 (Fed. Cir. 1997). In O. I. Corp., the CAFC, in interpreting the common word "passage," relied in part on expressions of alternative structures in the specification. The specification, in describing "passage," stated that "other non-smooth geometries may be used" and "the second section of the bore may be conical." Ultimately, the court decided that the word "passage" must include only "non-smooth" and "conical" passages. Since the alternative embodiments in the specification did not suggest other structures in an open-ended fashion, the court defined the term "passage" more narrowly than its ordinary meaning. Thus, in an attempt to broaden a claim term by discussing alternative embodiments, the patent drafter actually narrowed the claim term.

Additionally, O. I. Corp. illustrates the point that the court may have simply found a way to transfer the specification-based restrictions that were placed on means-plus-function claims to all claims. Now that the court has began following the statutory mandate of going to the specification to identify corresponding structure for use in narrowing the literal meaning of a means-plus-function claim element, it seems as if the court is unable to break this habit. While the lower court, in O. I. Corp., found non-infringement based upon its limited interpretation of the word "passage" under 35 USC § 112, ¶ 6, the CAFC reached the same conclusion using a different route. The CAFC removed the term "passage" from the prescribed § 112, ¶ 6 analysis, but found the term to have been "defined" more narrowly in the specification. To stretch the point even further, the court came to this conclusion despite the fact that the words left in the means plus function element at that point were unsupported by corresponding structure explicitly disclosed in the specification, which the court surprisingly found "apparently occurs by means known to those skilled in the art."

When coupled with the court's recognition that the doctrine of claim differentiation did not help the patentee in that case, one must conclude that the court is extremely serious about its intention to continue finding new "definitions" in specifications. Thus, it seems that when the court seeks to redefine a term, predictability and coherency may be sacrificed.

The court also finds an implicit redefinition of words used to describe prior art problems or features. See, e.g., SciMed Life Systems v. Advanced Cardiovascular Systems, No. 99-1499 (Fed. Cir., March 14, 2001); O. I. Corp. v. Tekmar Company, Inc. , 115 F.3d 1576, 42 USPQ2d 1777 (Fed. Cir. 1997). While it may initially seem justified to find an implicit redefinition of words used in referring to prior art, such reasoning is generally illogical and not founded on genuine patentability concerns. For example, in O. I. Corp. , the court relied in part upon a statement in the patent specification that suggested that "passages" in the prior art were generally smooth to redefine the term "passage" to exclude smooth passages. Clearly, "smooth passages," albeit smooth, are "passages" nonetheless. If the CAFC's reasoning in O. I. Corp. were correct (i.e., that "smooth passages" are not "passages"), then every noun prefaced by an adjective would mean something absurd. For example, "short people" would not be "people"; "tall buildings" would not be "buildings"; "fast cars" would not be "cars" within the meaning of the word.

This type of redefinition provides no public notice to either the patentee or the general public because neither may rely on what is written in the patent. Practically speaking, only the a posteriori result of litigation would show the meaning of a term that should have been clear a priori. This uncertainty in the meaning of claim terms is contrary to the notion that a patent should provide notice, whether the notice be to the patentee or the general public.

In addition, if a redefinition is necessary for patentability, it might arguably be understandable to find a new meaning to a claim term based on references to prior art. In other words, if the only point of novelty in a claim arises from the use of a well-known term, then it might be reasonable to redefine a claim term on that basis. In other words, if the only point of novelty that can be found in a claim is a limitation arising in a redefinition of a claim element, it might be reasonable to redefine the claim term on that basis. For example, in Clearstream Wastewater Sys., Inc. v. Hydro-Action, Inc. , 206 F.3d 1440 (Fed. Cir. 2000), the court pointed out that a means-plus-function element should extend to cover prior art structures unless the means-plus-function element is the only point of novelty in the claim. Likewise, it might be reasonable for a court to construe a claim term more narrowly if such a construction was necessary for patentability. After all, it has been recognized that most claims are simply combinations of old elements. Unfortunately, the court often ignores patentability concerns and finds a redefinition of terminology simply because prior art is referenced.

In ManTech Environmental Corp. v. Hudson Environmental Services, Inc., 152 F.3d 1368 (Fed. Cir. 1998), the court held that, since the claims and written description in the patent were unambiguous, it was correct for the lower court to construe the claims solely on the basis of the "intrinsic" evidence -- the claim language and the written description. However, despite their concurrence with the approach taken by the lower court, the CAFC construed the term "well" more broadly than the lower court, making it necessary to vacate the lower court's summary judgment finding non-infringement and remand the case. In patents claiming methods for remediating a hydrocarbon-contaminated region of a subterranean body of groundwater to eliminate or reduce the concentration levels of hydrocarbon contaminants, the term "well" required structure that, according to the CAFC, enabled either monitoring or injecting the groundwater, or both. However, the term "well" was not so broad as to cover any device that allowed access to groundwater (as one might have expected if an ordinary meaning were applied). On the other hand, neither did the word "well" necessarily require structure that enabled both monitoring and injecting the groundwater. Although the CAFC did not apply the narrower definition applied by the lower court, the definition that that the court applied was certainly narrower than the ordinary meaning.

In ManTech, the court focused its analysis on the language in the claims, which stated that some "wells" performed one function and others performed a second function. Thus, the court concluded that the claims required a redefinition of the word "well" to only include structures that performed at least one of those claimed functions. While sounding somewhat reasonable at first glance, this reasoning is also illogical and proves too much because, similar to the logic of O. I. Corp. , any noun prefaced by an adjective would narrow the non-modified noun. Likewise, any element modified by additional limitations would narrow the very definition of the non-modified element itself. For example, if a claim includes a "screw," it does not change the definition of the word "screw" simply because the claim might further be limited to screws that are three inches long. While the claim will certainly include the additional limitations, the definition of the primary element itself, the "screw" in this example, has not been redefined by the patentee such that the word now has that narrower meaning for all claims in the patent. As one can see, limitations that are added to a claim element do not inherently redefine the claim element itself. It would be unreasonable to suggest otherwise. Once again, this type of redefinition provides neither clarity nor notice to the public.

In Advanced Cardiovascular Systems, Inc. v. SciMed Life Systems, No. 00-1454 (Fed. Cir., August 6, 2001), the court suggested that statements of significance can be used to redefine claim terms. There, the court refused to redefine the claim terms "connecting elements," "interconnected," "connecting members," and "struts for connecting," even though the specification disclosed the connecting elements to be both generally parallel to each other and parallel to a stent's longitudinal axis. This conclusion was based on the absence of statements of "significance" in the specification. While the drawing showed the parallel relationships, the court stated that "[s]ince nothing in the specification assigns significance to the fact that the drawings align the connecting elements parallel both to each other and to the stent's longitudinal axis, we will not allow this aspect of the drawings to be imported into the claims as a limitation."

While this case could suggest to some that it is better not to discuss some elements of the drawings out of fear that the discussion could trigger a redefinition by a court, it is probably more reasonable to interpret the case to avoid comments regarding the importance or significance of particular elements.

The CAFC's use of a specification of a patent to narrow claim terms has already eroded confidence in the patent system. If left unchecked, it is foreseeable that the continued narrowing of claim terms will undermine all confidence in the patent system. Additionally, if the reasons for narrowing claim terms are based on flawed logic, then, not only will the patent system be undermined, but serious doubt may be cast on the integrity of future court decisions.

The patent system only provides the owner a monopoly for a limited time in return for the owner's full disclosure of the invention so that the public can make, use, and learn from the invention. As the disclosures of inventors are turned against them to permit potential infringers to curtail the scope of protection, inventors will eventually decide that the ultimate return for their investment in preparing and procuring a patent is not worth the effort. Conversely, potential infringers with deep pockets may elect to push the envelope and engage in the manufacture, use, and sale of patented inventions simply because the underlying patents provide detailed disclosures with consistent descriptions of claimed limitations.

Not only will continuing this recent trend in cases undermine confidence in the patent system, continuing to cross the once bright line between claims and specifications will frustrate the statutory focus of the specification (i.e., to enable those skilled in the art to make and use the invention) and the peripheral claims (i.e., to set the scope of the disclosed invention). For example, one can envision a group of inventors and patent attorneys who will risk reducing their disclosures beyond the minimum threshold of enablement in order to protect the breadth of the inventions. Thus, inventors and patent attorneys that select this approach will thwart the Constitutional purpose of the patent system for inventors to disclose their inventions to the public to promote the progress of the useful arts. Sparse patent specifications also promote the abuse of the patent system by people in the business of obtaining patents, who contribute no real innovation, and merely obtain patents to hold legitimate companies hostage.

No longer can patent attorneys be able to calm nervous inventors by advising them not to worry about disclosing details of their invention in their patent since those details may now unintentionally limit or "define" claim elements. As a result, patents may soon be drastically different from those issuing today. In fact, we may be headed toward a copyright-like patent system. In such system, patentees could discern practically nothing about their scope of protection. They could merely hope to prevent direct copiers of the exact embodiments disclosed in their patent specifications.

The court may be reacting to a few highly-publicized patents having broad claims, which portray our patent system as a mere registration system. The court may also be reacting to the overreaching nature of patent holders that attempt to "stretch" the breadth of their issued claims to encompass the activities of their competition. Regardless of the court's intentions, it should refrain from this type of judicial legislating. Congress has established a statutory framework that includes peripheral claims. Should this scheme prove unacceptable, it should be Congress that revokes peripheral claiming. As patent specifications continue to be used by the court to substantially narrow claims, the court effectively rewrites the statutory scheme, thereby rendering the statutory framework meaningless.

In this regard, Congress may need to address this issue by specifying when and to what extent claim elements should be redefined by a court. For example, a new statute could require courts not to exclude an ordinary meaning as one possible definition for each claim term unless the specification explicitly excludes such an ordinary meaning. The American Bar Association Intellectual Property Law Section Patent Legislation Committee is currently considering a resolution in this area.

Additionally, in order to fulfill the public notice initiative, the Patent and Trademark Office could respond by specifically pointing out whether claim terms have been given special meanings that would limit the claims to scopes that are narrower than their ordinary meanings. The assumption of such an obligation by the Patent Office might create an opportunity for courts to more confidently rely on ordinary meanings of the claim terms.

The courts are continuing to erode our peripheral claiming system in a way that may ultimately destroy our patent system. Consequently, innovation may slow down if patentees are not allowed to rely on minimum guaranteed scopes of patent protection. Meanwhile, practitioners should be aware that there are now many opportunities to make various types of redefinition "mistakes" in drafting patent applications. A few practice tips for avoiding such mistakes are listed below:

While some of these practice tips may not apply to particular inventions, patent drafters will be well served if they seriously consider each applicable suggestion. Despite Bell Atlantic, patent attorneys should avoid overreacting by offering technically thin specifications in the hope of avoiding redefinition of claim terms. While such a reaction might seem reasonable, one would hope that the courts or Congress would correct this narrowing trend without forcing patent drafters to risk not meeting the enablement requirement of 35 U.S.C. § 112. In addition, even if the inventors and patent attorneys overcome the § 112 hurdle, they run the risk of not supporting enough limitations with sufficient detail to overcome the hurdles of anticipation and non-obviousness during prosecution. Ultimately, one would hope that the courts or Congress would correct this narrowing trend before our patent system is irreparably harmed.