More than a century ago, Supreme Court Justice Joseph P. Bradley observed:

[s]ome persons seem to suppose that a claim in a patent is like a nose of wax, which may be turned and twisted in any direction, by merely referring to the specification, so as to make it include something more than, or something different from, what its words express. The context may undoubtedly be resorted to, and often is resorted to, for the purpose of better understanding the meaning of the claim, but not for the purpose of changing it and making it different from what it is. The claim is a statutory requirement, prescribed for the very purpose of making the patentee define precisely what his invention is, and it is unjust to the public, as well as an evasion of the law, to construe it in a manner different from the plain import of its terms.

White v. Dunbar, 119 U.S. 47 (1886).

The Court of Appeals for the Fifth Circuit restated this principle as “[a] patent may not, like a ‘nose of wax,’ be twisted one way to avoid anticipation and another to find infringement.” Sterner Lighting, Inc. v. Allied Electrical Supply, Inc., 431 F.2d 539, 544 (5th Cir. 1970). 

This principle means that you cannot construe a patent claim one way to avoid invalidating the claim and a second way to support a finding of infringement. In other words, once a patent owner makes a successful argument while a patent claim is being analyzed for invalidation, the patent owner cannot make an inconsistent argument to establish infringement of that claim.

Two recent decisions by the Court of Appeals for the Federal Circuit illustrates that Justice Bradley’s observation holds today. Data Engine Techs. LLC v. Google LLC, 2021 U.S. App. LEXIS 25705 (Fed. Cir. August 26, 2021); CommScope Techs. LLC v. Dali Wireless Inc., 2021 U.S. App. LEXIS 25294 (Fed. Cir. August 24, 2021).

The Data Engine decision concerned patents directed to systems and methods for displaying and navigating three-dimensional electronic spreadsheets by implementing user-customizable "notebook tabs" on the spreadsheet interface. The patent owner was able to avoid having the claims invalidated for abstractness (i.e., being ineligible for patenting due to 35 U.S.C. § 101) at one stage of the case. However, the Federal Circuit ultimately affirmed a finding of non-infringement at another stage of the case.

The CommScope decision concerned patents relating to wireless telecommunications technology. The Federal Circuit affirmed a lower court’s rejection of invalidity arguments based upon certain prior art references. However, the Federal Circuit also reversed the lower court’s denial of a motion for no infringement.

More than a century ago, Supreme Court Justice Joseph P. Bradley observed:

[s]ome persons seem to suppose that a claim in a patent is like a nose of wax, which may be turned and twisted in any direction, by merely referring to the specification, so as to make it include something more than, or something different from, what its words express. The context may undoubtedly be resorted to, and often is resorted to, for the purpose of better understanding the meaning of the claim, but not for the purpose of changing it and making it different from what it is. The claim is a statutory requirement, prescribed for the very purpose of making the patentee define precisely what his invention is, and it is unjust to the public, as well as an evasion of the law, to construe it in a manner different from the plain import of its terms.

White v. Dunbar, 119 U.S. 47 (1886).

The Court of Appeals for the Fifth Circuit restated this principle as “[a] patent may not, like a ‘nose of wax,’ be twisted one way to avoid anticipation and another to find infringement.” Sterner Lighting, Inc. v. Allied Electrical Supply, Inc., 431 F.2d 539, 544 (5th Cir. 1970). 

This principle means that you cannot construe a patent claim one way to avoid invalidating the claim and a second way to support a finding of infringement. In other words, once a patent owner makes a successful argument while a patent claim is being analyzed for invalidation, the patent owner cannot make an inconsistent argument to establish infringement of that claim.

Two recent decisions by the Court of Appeals for the Federal Circuit illustrates that Justice Bradley’s observation holds today. Data Engine Techs. LLC v. Google LLC, 2021 U.S. App. LEXIS 25705 (Fed. Cir. August 26, 2021); CommScope Techs. LLC v. Dali Wireless Inc., 2021 U.S. App. LEXIS 25294 (Fed. Cir. August 24, 2021).

The Data Engine decision concerned patents directed to systems and methods for displaying and navigating three-dimensional electronic spreadsheets by implementing user-customizable "notebook tabs" on the spreadsheet interface. The patent owner was able to avoid having the claims invalidated for abstractness (i.e., being ineligible for patenting due to 35 U.S.C. § 101) at one stage of the case. However, the Federal Circuit ultimately affirmed a finding of non-infringement at another stage of the case.

The CommScope decision concerned patents relating to wireless telecommunications technology. The Federal Circuit affirmed a lower court’s rejection of invalidity arguments based upon certain prior art references. However, the Federal Circuit also reversed the lower court’s denial of a motion for no infringement.