Patent claims have “limitations.”  Accused infringing products have “elements.”  A patent owner may argue that patent claim “limitations” read onto “elements” of an accused infringing product.  The Federal Circuit, sitting en banc, resolved this divisive issue fifteen years ago: “It is preferable to use the term ‘limitation’ when referring to claim language and the term ‘element’ when referring to the accused device.” Festo v. Shoketsu, 234 F.3d 558, 563 n.1 (Fed. Cir. 2000) (en banc).  Unfortunately, in the same breath in which the Federal Circuit gaveth clarity, it also tooketh it a way, the complete Festo statement being as follows:

In our prior cases, we have used both the term “element” and the term “limitation” to refer to words in a claim.  It is preferable to use the term “limitation” when referring to claim language and the term “element” when referring to the accused device.  However, because the en banc questions use the term “element,” we use that term in this opinion. [emphasis added; internal citations omitted]

So when attorneys and courts quote other language from this Festo decision — one of the most quoted decisions in patent law — that language improperly uses the term “element” to refer to patent claim language, rather than “limitation”, thus perpetuating the very confusion that the Festo footnote sought to clarify.  Darn … missed it by that much.

It is understandable, then, that language in the newly proposed Manager’s amendment to the Senate’s PATENT Act bill may misuse the term “element”, stating the following in a portion of the bill on what information must be provided in pleading patent infringement:

(5) For each claim identified under paragraph (2), a description of the elements thereof that are alleged to be infringed by the accused instrumentality and how the accused instrumentality is alleged to infringe those elements. [emphasis added]

Perhaps this language is intended to seek a description of how claim limitations read onto elements of an accused instrumentality?

This is part of a contested provision in the bill regarding how much information must be provided in a complaint in order to initiate a district court litigation on patent infringement.  The various interested parties, Senators and their staff may be more focused at the moment on the big picture of whether and to what extent there should even be such a provision at all.  Addressing this technical problem may not be high on the priority list.  Those who oppose this provision altogether may focus more on striking the entire provision than correcting this.  Those who want this provision may be wary about proposing any change lest the house of cards fall altogether.

Patent purists would want to see the words “limitations” and “elements” used correctly.  The Federal Circuit’s well-intended attempt in Festo to teach us how to use the terms “limitations” and “elements” was less than perfect in its execution.  The current bill misses the mark.  We take no position here whether any of the bill’s provision itself or anything like it should be enacted.  But if — for good or for bad — something is enacted, may “limitations” be limitations, “elements” be elements, and “bears” be bears (okay …  bears have nothing to do with this, but it made for a more interesting title to this post).