I teach Introduction to Intellectual Property Law every spring semester, an experience that often causes me to reflect on some of the fundamental premises of intellectual property law in a way that advanced courses don’t necessarily always invite. When you’re deep in the nuances of the effective date provision for post-AIA § 102, it’s easy to lose sight of some of the big questions. This post is one of a few half-baked ideas from that return-to-basics reflection.
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I grew up steeped in the world of property law. My father’s law office was in rural New York, and his core practice involved representing farmers, villages, and small businesses on land transactions, estate planning, and probate matters. Some of my first memories are of photocopying property abstracts: voluminous documents that contained the transaction history for a property, often going back a hundred years or more. We’d copy these abstracts and then affix the new deed or mortgage associated with the transaction. Later, I learned to type up property descriptions for deeds, writing out the metes and bounds of the land being transferred. These descriptions used points and lines to articulate the land for which the property rights applied.
For me, the language of patent claims as boundaries resonated early and easily. After all, patent cases routinely refer to claims in boundary-like terms. One example is the likening of claims to “metes and bounds,” as Judge Rich did in footnote 5 of In re Vamco Machine and Tool, Inc., 752 F.2d 1564, 1577 (Fed. Cir. 1985).
The function of claims is (a) to point out what the invention is in such a way as to distinguish it from what was previously known, i.e., from the prior art; and (b) to define the scope of protection afforded by the patent. In both of those aspects, claims are not technical descriptions of the disclosed inventions but are legal documents like the descriptions of lands by metes and bounds in a deed which define the area conveyed but do not describe the land.
Another example is this passage from Judge Michel’s opinion in Halliburton Energy Services, Inc. v. M-I LLC, 514 F.3d 1244, 1249 (Fed. Cir. 2008):
Because claims delineate the patentee’s right to exclude, the patent statute requires that the scope of the claims be sufficiently definite to inform the public of the bounds of the protected invention, i.e., what subject matter is covered by the exclusive rights of the patent. Otherwise, competitors cannot avoid infringement, defeating the public notice function of patent claims.
Patent law scholarship, too, treats patent claims as if they are boundary-setting. Books and articles refer to modern claiming practice as “peripheral claiming”– language that implies an area that is within and that which is without. Even those scholars who have critiqued the idea of peripheral claiming nonetheless visualize patent claims as defining an area: signposts instead of fenceposts. The idea is still that there is a zone set by the patent claim.
And yet, the more I’ve litigated, studied, and taught about patents, the more I’ve realized that conceptualizing patent claims as defining an area is fundamentally wrong. Patent claims are not boundaries, and it’s confusing to those who are trying to grasp patent law when we talk about them that way. There is no area that is “encompassed” within patent claims. Patent claims don’t define a “boundary.” And they are quite unlike the metes and bounds of a deed description. Even if one could plot the components of a patent claim in some n-dimensional space, it would still not define a closed form. Conceptualizing patent claims as if they define some “area” of technology isn’t how they actually work. One cannot draw a line from one claim element to another, except in the sense that claim elements can interrelate with one another–but that, too, is really just another element, albeit one that is implicit from the semantic structure of the claim rather than explicit in its words.
So how should patent claims be conceptualized, if not as establishing a boundary? My first answer goes back to how litigants and courts often actually approach them: as discrete legal elements akin to the elements of any other legal claim. The limitations in patent claims aren’t like the boundaries defined in a deed; instead, they are like the elements of a tort. Each of these elements must be met in order for the claim to be infringed, invalidated, or adequately supported by the disclosure.
Consider, for example, patent law’s novelty requirement. In order for a prior art reference to anticipate a patent claim, each and every element of the claim must be present in the prior art reference. Or the analysis for infringement: for there to be infringement, each and every element of the claim must be present in the accused product or process, either literally or as an equivalent. In both cases, patent claims are treated as if they are a series of elements–not as boundary lines that are crossed or not. They are, in the words of Nolo’s Plain-English Law Dictionary, “the component parts of a legal claim.”
In the end, despite my initial attraction to the language of real property to describe patent claims, I’ve come to realize that this rhetorical device–enshrined in patent law judicial opinions and used in briefs and legal scholarship–is both misleading and wrong. Patent claims are not boundaries, and we should stop referring to them that way. Instead, they are elements in their legal sense: sets of individual legal requirements that must each be proven to achieve a particular legal status.
Perhaps this is so obvious that it doesn’t need to be said. And yet, for those who are learning patent law for the first time, it is hardly obvious – particularly when the opinions that we read talk about patent claims in boundary-like terms.
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Thoughtful, non-repetitive comments welcome. Comments that I think are crud or junk, in my subjective opinion, will be deleted without further notice or comment.
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March 12, 2021 at 10:35PM
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Patent Claims as Elements rather than Boundaries - Patently-O
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