EDITOR’S NOTE: This article is an excerpt from Rules of Patent Drafting: Guidance from Federal Circuit Cases, 2014 Edition, which is now available at Amazon.com. This is the fourth installment of what is scheduled to be a 6 part series. To read other installments please see Joseph Root on Patent Claim Drafting.
Patent prosecutors have responded to the Disclosure Revolution in much the same way that clergy and medical doctors responded to the Black Death. Medieval doctors offered incantations and ritual; patent lawyers recite boilerplate. Neither is particularly effective.
Here, “boilerplate” refers to the general disclaimers, caveats, and restatements of aphorisms included in patent applications, for the apparent purpose of warding off evil spirits and narrow claim constructions. Specific disclaimers, as well as alternatives and variations, stand separate from boilerplate. To illustrate the difference, consider the following two statements: “The frammis illustrated in Fig. 3 is not limited to the constructional detail shown there or described in the accompanying text. As those of skill in the art will understand, a suitable frammis can be fabricated from aluminum, stainless steel, or high-density polymer.” And: “Those in the art will understand that a number of variations may be made in the disclosed embodiments, all without departing from the scope of the invention, which is defined solely by the appended claims.” The first, specifically focused, is not boilerplate. The second, often appended to applications, is.
Broadening statements are distinguished from boilerplate by their focus. The first sentence above was specifically aimed at the frammis, while the boilerplate sentence speaks generally about “disclosed embodiments.” The first sentence specifically offers a variation, a detail that differs from the disclosed embodiment. That statement continues by noting specific alternative materials—“aluminum, stainless steel, or high-density polymer.” The boilerplate simply says “a number of variations may be made,” which offers no context whatsoever for the court to employ in a broadening claim construction.
It cannot be overemphasized that broadening statements like the first sentence above are routine exercises for the patent drafter. No consultation with the inventor is required, and no particular technical skill is needed.
Patent practitioners have traditionally added a few lines, or a paragraph or so of boilerplate to applications, but lately these incantations can seem more important than the disclosure. Indeed, one can now easily find instances in which the volume of boilerplate actually exceeds the volume of disclosure, in some cases by a factor of two or more. Most boilerplate consists of entreaties seeking to avoid narrow claim constructions, including items such as eight lines devoted to how the patentee would like to have the word “and” construed.
The Federal Circuit gives full marks to genuine broadening statements showing alternatives or variations, but boilerplate never works and is usually ignored. Broadening statements distinguish themselves by their tight focus on the subject matter at hand, and they generally offer specific indications of the inventor’s intent, rather than general pleas for mercy. In Honeywell Int’l., Inc. v. U.S., the Court of Federal Claims had held the patent invalid for failure to set out a written description of the invention. The patent dealt with an aircraft cockpit display, and the claim at issue encompassed a number of displays. Finding that the specification only described one type of display, a CRT, the claim was held invalid.
The Federal Circuit reversed, based on this broadening statement: “[w]hile specific configurations of the local Display . . . 37 have been described, it is understood that the present invention can be applied to a wide variety of display and vision aid devices.” That language sufficiently broadens the disclosure to embrace display devices other than CRTs. This is variation, not boilerplate, because it addresses an identified element of the invention and suggests alternatives and variations. The same was true in Dealertrack, Inc. v. Huber, a 2012 case, in which the specification contained boilerplate language, “It should be kept in mind that the following described embodiment(s) is only presented by way of example and should not be construed as limiting the inventive concept to any particular physical configuration.” But the description then continued with specific broadening language:
Although illustrated as a wide area network, it should be appreciated that the communications medium could take a variety of other forms, for example, a local area network, a satellite communications network, a commercial value added network (VAN) ordinary telephone lines, or private leased lines…. The communications medium used need only provide fast reliable data communication between its users.
That language sounds a lot like boilerplate, but the drafter has taken the trouble to provide specific examples, tailored to the application at hand. The result – broadening.
The patentee in Silicon Graphics, Inc. v. ATI Techs., Inc., however, relied on pure boilerplate, achieving the opposite result. The technology concerned a digital graphics system, and the claim included the term “scan conversion” to describe the process of rasterizing an image. The district court construed that term as operating “entirely on a floating point basis,” because floating point numbers were the only values described. The patentee pointed to the following language as indicating the possibility of other methods: “[O]ne or several of [the disclosed operations]can be performed in fixed pint without departing from the scope of the present invention.” Unlike Honeywell, however, the court classified this language as completely ineffective: “Thus general language in the specification permitting some operations to be done in fixed point does not work to contradict the specific language that requires scan conversion in floating point.”
Where a specification seeks to expand coverage employing vague, general terms, the Federal Circuit has failed to respond. The only point that seems more amazing than the amount of time and energy expended on boilerplate is the utter futility of all of this effort. So far as can be ascertained, this outpouring of prayer has accomplished exactly nothing.
There seems to be only one instance where the Federal Circuit has even noticed all this boilerplate. In that case, Wireless Agents, Inc. v. Sony Ericsson Mobile Communications AB, the patentee sought a construction of the claim term “alphanumeric keyboard” that would cover the defendant’s 12-key cell phone keyboard. That claim construction faced two hurdles. First, the specification had described the keyboard as including “a substantially full set of alphanumeric keys.” Further, the specification had also cited the disadvantages of the 12-key keyboard. The patentee argued that neither of these passages should limit the claims because the specification concluded with the following language:
Although the invention has been described with reference to a particular embodiment, this description is not meant to be construed in a limiting sense. Various modifications of the disclosed embodiments as well as alternative embodiments of the invention will become apparent to persons skilled in the art. . . . It is therefore contemplated that the appended claims will cover any such modifications or embodiments that fall within the scope of the invention.
The court was short and to the point: “We see nothing in this language that contradicts our reading of the specification.”
Except for that one case, the Federal Circuit seems to have ignored the reams upon reams of boilerplate that have crossed its threshold. When good things happen, boilerplate is never credited. In the Teleflex decision, for example, the patent in suit contained the following boilerplate:
The invention has been described in an illustrative manner, and it is to be understood that the terminology which has been used is intended to be in the nature of words of description rather than of limitation.
Obviously, many modifications and variations of the present invention are possible in light of the above teachings. It is, therefore, to be understood that within the scope of the appended claims, wherein reference numerals are merely for convenience and are not to be in any way limiting, the invention may be practiced otherwise than as specifically described.
The court’s rationale supporting its refusal to limit claim scope never mentioned that language.
By the same token, boilerplate has never staved off disaster. An illustrative example of that statement can be seen in Cultor Corp. v. A.E. Staley Mfg. Co. The subject matter of that case was a modified polydextrose, in which the conventional process of heating dextrose in the presence of a catalytic amount of citric acid, which produced a polydextrose having a slightly bitter taste, was modified by passing the final polydextrose, in aqueous solution, through an ion-exchange resin. The claims at issue were all directed to that process, but not one of those claims mentioned the use of citric acid. The specification, however, defined water-soluble polydextrose as being prepared by melting and heating dextrose in the presence of a catalytic amount of citric acid. In light of that disclosure, the district court limited all of the claims to polydextrose produced with citric acid as a catalyst, a limitation that resulted in a finding of no literal infringement. The Federal Circuit upheld that limitation, saying, “Having explicitly defined this term as limited to that prepared with a citric acid catalyst, this effected a disclaimer of the of the prior art acids.”
In reaching that result, the court completely ignored the following boilerplate: “The present invention is illustrated by the following examples. However, it should be understood that the invention is not limited to the specific details of these examples.”
Similarly, boilerplate cannot expand disclosure. In a dispute involving a cable assembly for controlling the door on an automotive heating/air-conditioning system, the patent in suit claimed various types of manual systems, and the infringing device operated automatically. The specification included the following line of boilerplate: “the strands may have the slack taken up in several ways.” That statement was completely unavailing, however, because “in several ways” does not recite any specific structure.
There does not seem to be a single Federal Circuit decision in which boilerplate was taken into account in any way whatsoever. Thus, the overwhelming evidence is that drafters should not waste their time on anything but the most its consequential, conventional sorts of boilerplate statements.
Join the Discussion
4 comments so far.
Joe RootSeptember 5, 2014 07:00 am
I agree completely with both comments above — I recommend using boilerplate together with alternatives and variations, and with additional embodiments where possible. There are no more magic wands!
SteveSeptember 4, 2014 05:49 pm
Great information and advice Mr. Root.
Since without specific reference to such by a court, one cannot know whether or not boilerplate was (or will be) a factor in helping the inventor (us humans — which includes of course judges — cannot always explain exactly why we decided something one way or another), I would suggest including both broadening statements and boilerplate.
American CowboySeptember 3, 2014 09:48 am
Brother Root, I fully agree with your proposition.
I would take it one step further: Broadening statements that are effective name the actual alternatives; i.e. they provide a written description of that alternative and presumably by the mere naming of the alternative provide enablement of the alternative embodiment.
Just saying something like “I disclose a frammis and things that might also be a frammis” which is what the boilerplate does, there is no written description or enablement of “things that might also be a frammis.”
step backSeptember 3, 2014 04:20 am
Bravo for taking on the holy of holies, the boilerplate