On numerous occasions the Federal Circuit has found that a statement in the specification describing the “present invention” as having a certain characteristic can operate to limit the scope of the claims.  Indeed, the court has instructed that “[w]hen a patent thus describes the features of the ‘present invention’ as a whole, this description limits the scope of the invention.”  Verizon Service Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1308 (Fed. Cir. 2007). 

The key to properly applying this legal principle requires determining whether the “present invention” statement truly describes the invention as a whole, or whether it merely describes one preferred embodiment.  As shown by the recent district court opinion in LG Elecs. U.S.A., Inc. v. Whirlpool Corp., 2011 WL 1560592, *14 (D.N.J. Apr. 25, 2011), not all “present invention” statements will limit claim scope. 

In LG, the court determined that a “present invention” statement did not limit claim scope because the statement merely referred to one preferred embodiment, not the entire invention.  Specifically, the court held that a statement reciting “the structure for supplying water to the dispenser and the icemaker, according to the present invention will be described with reference to Fig. 6,” did not describe the entire invention, but only described one particular embodiment, and therefore did not limit the scope of the claim.

Differences of opinion may exist as to whether a statement referring to patent figures, as the one in LG, does or does not refer to the invention as a whole.  But the legal principle that “present invention” statements do not limit claims if they only refer to a preferred embodiment, and not the whole invention, has strong judicial support especially where other portions of the specification describe the invention more broadly.   E.g., Sanders v. The Mosaic Co., No. 2010-1418, 2011 WL 1491248, *2-*3 (Fed. Cir. Apr. 20, 2011) (nonprecedential).

For additional discussion and case authority on this topic see Annotated Patent Digest § 5:17.50 “Present Invention” or “The Invention” Statements.  See also Annotated Patent Digest § 5:58 Explicit Statements Limiting Scope of Claimed Invention.

January 2010 – Click for full issue

• Federal Circuit holds that the penalty for false marking under § 292 must be assessed on a per article basis with the district court setting the amount of the penalty anywhere from a fraction of a penny to a maximum of $500 per article falsely marked
• E.D. Texas applies on-going royalty to redesigned product since it was not more than colorably different from original adjudicated infringing product
• Lessons to note from the Federal Circuit’s opinion in i4i on the need for JMOL motions and opinions of counsel
• Mandamus granted to transfer infringement action to forum where accused product was developed since original forum had no “relevant factual connection” to the infringement action

April 2010 – Click for full issue

• Post Seagate cases show that the failure to obtain an opinion of counsel still weighs heavily in determining whether to enhance damages
• Using royalty rates in licenses given to settle infringement actions as evidence of a royalty rate in a hypothetical negotiation
• Accused infringer’s failure to challenge scope of a permanent injunction when appealing a final judgment precluded later challenge to the injunction’s scope when defending against a charge of contempt
• Federal Circuit overrules PTO’s methodology of calculating patent term adjustments where Period A delays “overlap” Period B delays

July 2010 – Click for full issue

• When multiple plaintiffs/relators sue for the same act of patent false marking