The Importance of Wording in Patent Claims

The Importance of Wording in Patent Claims The Importance of Wording in Patent Claims Since words can be imprecise, patent claims often can be difficult to construe. This is true even in cases involving fairly simple technology, where ambiguous words (or, in the following case, numbers) breed controversy. Witness the case of the Gillette Co., which has a patent on the Mach 3 razor, versus Energizer Holdings Inc., which later developed and sold the competing Schick Quattro razor. The Quattro razor has four blades in contrast to the three blades of the Mach 3 razor, so the Quattro razor is obviously different. But doesnt four blades include three blades? Well, yes, but four is not three. One problem for Energizer is the patent law maxim that additions to a patented device typically still constitute patent infringement. In other words, to not infringe, you generally have to take something away from what is claimed in a patent and replace it with something else. The elusiveness of langua ge leaves an open question in a patent lawsuit Does a four-blade razor infringe on the patent that claims three?So, the Gillette case welches mora about whether a second blade between a first and a third blade, as stated in Gillettes patent, encompasses two second blades rather than about whether four includes three. Gillettes patent specification, which was used to interpret the claim, included approximately 30 references to three blades and no reference to a four-bladed razor. That fact initially sealed Gillettes fate when the Federal District Court in Boston refused to issue an injunction against Energizer in January 2004. The case then went to Washington, where the U.S. Court of Appeals, in a 2-1 decision, said the district court erred in construing Gillettes patent as precluding the addition of a fourth blade, or, more accurately, two second blades. Two justices found favor with Gillettes patent specification where it once refers to a plurality of blades, meaning there could b e more than three. Furthermore, in a different case involving the European counterpart to Gillettes patent, Energizer had taken the unfortunate fleck that Gillettes patent covered more than just three blades. Supreme Thinking The United States Supreme Court does not often hear patent cases, but when it talks about patents and the nature of language, it can be revealing. This is from one Supreme Court opinion Unfortunately, the nature of language makes it impossible to capture the essence of a thing in a patent application .... A verbal portrayal of an invention is usually an afterthought written to satisfy the requirements of patent law. This conversion of machine to words allows for unintended idea gaps which cannot be satisfactorily filled. Often an invention is novel and words do not exist to describe it. The dictionary does not always keep abreast of the inventor. It cannot. Things are not made for the sake of words but words for things .... The language in the patent claims may not capture every nuance of the invention or describe with complete precision the range of its novelty. That was in a 2002 ruling. In 1892, the Supreme Court stated that the specification and claims of a patent ... constitute one of the most difficult legal instruments to draw with accuracy. To both of these quotes, patent attorneys like me say, Amen. Perhaps the real question in the Gillette case, then, is whether Gillettes patent claim fairly portrays the possibility that there could be a fourth blade. Stated another way, given the imprecision of language, if the Gillette patent does not explicitly preclude the addition of a fourth blade, then maybe the two justices siding with Gillette got it right. On the other hand, how is Energizer, as a competitor, supposed to know what does and what does not infringe Gillettes patent? This is a real tension in patent law. Still, all hope is not lost for Energizer. At the trial court of the Gillette case, Energizer raised other defenses to t he patent. Since, for example, the law of the case is now that Gillettes patent encompasses a razor with two second blades, if Energizer can show a prior razor with that configuration, Gillettes patent might be found invalid. The trial court had to decide if Schicks other defenses, such as the assertion that Gillettes patent is invalid, have merit and whether Gillette is entitled to an injunction and, ultimately, damages. At that point, the only likelihood, absent a settlement, was at least another appealhey, no one said it was easy. Adapted from Does 4 Include 3? by Kirk Teska, Law Firm of Iandorio Teska and Suffolk University Law School, for Mechanical Engineering, January 2006. The United States Supreme Court does not often hear patent cases, but when it talks about patents and the nature of language, it can be revealing.