Inventor’s lingo might be at fault in the Phillips v. AWH Corp case now pending at the Federal Circuit.
Part of the design process is to label various parts of the newly created design. Certain components or pieces may get a particular moniker based on function, looks, or pure whimsy. For example, I once named a particular project “Yukon” (a.k.a. “Yukon Cornelius”) after the famous explorer in the Rudolph the Red Nosed Reindeer animated Christmas program. This was because the design group was being treated like we were in the Land of the Misfit Toys. Thankfully, the name stuck before management ever really got wind of that one, but I digress.
My point is that part of the invention process is to put labels on parts of the invention. Most of the time, the labels are only that: labels and not descriptors. In many cases, the labels are purely cosmetic and not functional description.
The key point is that the labels used by an inventor must be dissected and not taken for granted by the attorney drafting the application.
I had the occasion to take another look at Phillips v. AWH Corporation and to step back and analyze what really went wrong, and I think it may be a case of the attorney using the inventor’s lingo and that has brought the case to an en banc hearing at the Federal Circuit.
The invention is a wall panel that is made from sheet metal and welded together to build jail cells. Certain folded portions of the sheet metal were labeled “baffles” in the claims, and the dictionary definition of “baffles” is baffling the court.
I have a hunch that the inventor called the folds “baffles” merely because they look someone like baffles, but perform no such function. The function of the folded features are to stiffen the panels and provide vertical load bearing capability, not in any way to baffle or restrict flow of any material. Unfortunately for the inventor, an example of a “baffle” deflecting a bullet was given in the specification, which helped the court strictly interpret “baffle” in the claims.
Reading the tea leaves, I have a conjecture that the inventor used the label “baffles” in the discussion with the patent attorney, who dutifully produced a patent application with claims of “baffles” when a better description would have been “stiffeners.” Had the attorney used “stiffeners,” his client would have licensed his product years ago and avoided at least two costly trips to the CAFC.
This is another reminder that it is so terribly important to break down the invention to its functional parts and understand how the invention works before drafting the application. I have had several cases where the inventor may not appreciate certain functional aspects of the invention. Part of the patent drafter’s role is to explore the invention with the inventor’s help, and categorize the features appropriately. The patent drafter must look past the inventor’s language and understand the function of the invention itself.