October 6, 2016

Anything You Say Can and Will be Used Against You in a Court of Law

By Bryan K. Wheelock, Principal

Consistent with the Miranda warning that anything you say can (and will) be used against you in a court of law, the Federal Circuit looks to every part of a patent when construing the claims — including the lowly abstract.  In Hill-Rom Co. v. Kinetic Concepts, Inc., 209 F.3d 1337, 1341 (Fed. Cir. 2000) the Federal Circuit used the Abstract to support its claim construction.  The Federal Circuit rejected the argument that 37 CFR 1.72 (b) provides that the abstract “shall not be sued for interpreting the scope of the claims,” pointing out that this was a Patent Office rule, governing the conduct of patent examiners examining patent applications, and not construction of claims by the courts.

The Hill-Rom court noted other instances where it used the Abstract to construe claims: United States Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1560, 41 USPQ2d 1225, 1230 (Fed.Cir. 1997) (citing the description in the Abstract); Stryker Corp. v. Intermedics Orthopedics, Inc., 96 F.3d 1409, 1412, 40 USPQ2d 1065, 1066 (Fed.Cir. 1996) (citing the description in the Abstract); Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 1269, 229 USPQ 805, 810 (Fed.Cir. 1986) (citing the description in the Abstract), and found no legal principle that would require it “to disregard that potentially helpful source of intrinsic evidence as to the meaning of claims.” The Federal Circuit also looked to the Abstract in Honeywell Inc. v. Victor Co. of Japan Ltd., 298 F3d 1317, 63 USPQ2d 1904 (Fed. Cir. 2002).

However, in Innova’Pure Water, Inc., v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1121 [72 USPQ2d 1001, 1008] (Fed. Cir. 2004), the Federal Circuit discounted statements made in an Abstract, noting “While a statement in the Abstract may operate as a clear expression of manifest exclusion, for several reasons, this statement does not.”