cK, in a comment to a recent post, made the following request:

Please post something regarding the implications of TITLE of the invention in patent applications.

Moreover, Please let us know what do you think can be a difference or implication of the following

“A Method and System for…..�

“A Method and A System for…..�

“Method and System for …..�

First, I’ve assumed that cK is asking about the claim construction consequences of the title’s wording. (If not, cK, let me know what you’re after. And sorry for the long digression.)

Second, let’s talk first principles: The title is part of the specification. It’s drafted by the applicant, not the Patent Office. All this is mandated in the governing regulations, 37 CFR secs 1.51(b)(1), 1.72(a). And, as we know from last summer’s blockbuster en banc decision in Phillips v. AWH Corp., when it comes to claim construction, the specification rules the roost:

The importance of the specification in claim construction derives from its statutory role. The close kinship between the written description and the claims is enforced by the statutory requirement that the specification describe the claimed invention in “full, clear, concise, and exact terms.” 35 U.S.C. § 112, para. 1; see Netword, LLC v. Centraal Corp., 242 F.3d 1347, 1352 (Fed.Cir.2001) (”The claims are directed to the invention that is described in the specification; they do not have meaning removed from the context from which they arose.”); see also Markman v. Westview Instruments, Inc., 517 U.S. 370, 389, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996) (”[A claim] term can be defined only in a way that comports with the instrument as a whole.”). In light of the statutory directive that the inventor provide a “full” and “exact” description of the claimed invention, the specification necessarily informs the proper construction of the claims.

415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc). It would seem to follow, then, that it is perfectly proper to rely on the patent’s title — which is part of the specification (indeed, a mandatory part) — to construe a disputed claim term.

Third, let’s talk case law … below the fold.

The Federal Circuit cases on using the title to construe a disputed claim term blow a little hot and cold. Perhaps the best summary is that the Federal Circuit is happy to draw secondary support for a chosen claim construction from the patent’s title, but that it will be a bit uncomfortable if the title is carrying a large share of the weight of the claim construction theory.

The first contemporary case expressly relying on a patent’s title to help construe the claim appears to be Exxon Chemical Patents Inc. v. Lubrizol Corp., 64 F.3d 1553, 1557 (Fed. Cir. 1995). Just four years later, however, the Federal Circuit seemed quite critical of relying on a patent’s title to construe a claim term. In that case, Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1311-1313 (Fed. Cir. 1999), the court both criticized the lower court’s undue reliance on the patent’s title and sought to minimize the weight of the Exxon case. According to Pitney Bowes,

the purpose of the title is not to demarcate the precise boundaries of the claimed invention but rather to provide a useful reference tool for future classification purposes. In any event, if we do not read limitations into the claims from the specification that are not found in the claims themselves, then we certainly will not read limitations into the claims from the patent title. Consequently, an amendment of the patent title during prosecution should not be regarded as having the same or similar effect as an amendment of the claims themselves by the applicant. [Para.] The near irrelevancy of the patent title to claim construction is further demonstrated by the dearth of case law in which the patent title has been used as an aid to claim construction.

Id. at 1312.

Finally, and perhaps a bit surprisingly, the Federal Circuit has drawn support for its claim construction decision from a patent’s title in at least three cases after Pitney Bowes. They are as follows:

• SunTiger, Inc. v. Scientific Research Funding Group, 189 F.3d 1327, 1335 (Fed. Cir. 1999)
• PIN/NIP, Inc. v. Platte Chemical Co., 304 F.3d 1235, 1244 (Fed. Cir. 2002)
• Poly-America, L.P. v. GSE Lining Tech., Inc., 383 F.3d 1303, 1310 (Fed. Cir. 2004)

UPDATE: I should add that I made no effort at all to find trial court claim construction opinions in which the court relied on a patent’s title to help it construe a claim term.  There may be many, there may be few; I just don’t know.