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).

  • In the wake of the FTC-Google settlement, an investigation into potential antitrust violations by Google continues in Europe.  Joaquin Almunia, the European Commission’s antitrust & competition chief, said that the FTC’s decision would not affect the European Commission’s investigation. (Financial Times)
  • Unwired Planet — an NPE formed out of the remains of Openwave Systems, who has been engaged in patent skirmishes with many large tech companies — has acquired more than 2400 patents from Ericsson, including patents relating to 2G, 3G, and 4G (LTE) cellular standards.  Ericsson reportedly stands to receive a percentage of any licensing revenues obtained by Unwired for these patents. (TechCrunch)
  • For the 20th consecutive year, IBM received more U.S. patents than any other company (6,478 patents granted in 2012). (Bloomberg)
  • Kodak received approval today from a U.S. bankruptcy court judge to sell a trove of 1,100 digital imaging patents to Intellectual Ventures for $525 million, with a number of IV’s licensees chipping in to fund the purchase price. (Rochester Democrat & Chronicle)
  • DiceThe DOJ and USPTO released a joint policy statement on January 8 regarding remedies for infringement of FRAND-encumbered SEPs, taking the position that injunctive relief is generally inappropriate for these patents.  Microsoft praised the statement, and called on the FTC to consider strengthening its consent agreement with Google.
  • Ars Technica reports that at the 2013 Consumer Electronics Show in Las Vegas, a panel of speakers discussed the effects that patent trolls are having on technology companies and proposed solutions.  Congressman Peter DeFazio, who recently introduced legislation purportedly designed to protect companies from predatory infringement suits, appeared on the panel.
  • The Standardization Administration of the People’s Republic of China (SAC) released a draft interim version of its Regulatory Measures on National Standards Involving Patents for public comment on December 19, 2012.  The public comment period runs until January 20, 2013.
  • After almost a year of investigation, the European Commission sent a statement of objections to Samsung regarding Samsung’s potential misuse of mobile device-related standard-essential patents.
  • The USPTO is soliciting comments from the public regarding the potential need for and structure of a “small claims patent court.”  Written comments must be submitted to the USPTO by March 18, 2013.  More from Patently-O and Patents Post-Grant.