In Wastow Enterprises, LLC v. TruckMovers.com, Inc.,1 the Federal Circuit held the patent claims were limited to a universal folding boom trailer because the specification, including the title, referred to the “present invention” as including this limitation. The court explained that claims missing a particular feature can be disclaimed or disavowed when the specification describes “the present invention” as having that feature.
Wastow Enterprises, LLC, owned U.S. Patent No. 8,613,583 (the ’583 patent), titled “Universal Folding Boom Trailer.” Wastow sued TruckMovers.com, Inc., and Dealer’s Choice Truckaway System, Inc., d/b/a TruckMovers (collectively, TruckMovers), asserting that TruckMovers was violating claims 1–15 of the ’583 patent by making, using, selling or offering to sell its Z-Wing towing system. The ’583 patent discloses a towing system and a process of loading, transporting and delivering trucks. The specification stated that the “present invention overcomes all the shortcoming[s] of previous methods and apparatuses by providing a new Universal Folding Boom Trailer for transport[ing] multiple vehicles in a safe and legal manner.”2 The “Universal Folding Boom Trailer” provides several “advantage[s],” for example, a superior “weight bearing capacity,” operability without having “to immobilize the steering wheel with the driver seat belt” and a lower risk of a “blowout.”3
Independent claim 1 recited the following:
1. A towing system, comprising:
a towing vehicle, wherein the towing vehicle is a first truck;
a towed vehicle having an axle and a frame, wherein the towed vehicle is a second truck; and
a device removably mounted to the towing vehicle and to the towed vehicle, the device including[:]
a front portion removably interfacing with the towing vehicle,
a middle portion,
a rear portion at a different elevation from the front portion for removably mounting to both the axle and the frame of the towed vehicle and supporting the towed vehicle from underneath the towed vehicle, wherein the front portion and the rear portions are joined to the middle portion in a rigid configuration, the rear portion further having a front axle connector to which the axle of the towed vehicle is attached and a single central beam with a frame connector at an end of the single central beam to which the frame of the towed vehicle is attached, wherein the rear portion is adjustable and slides forward and aft for hauling various lengths of the towed vehicle,
wherein the single central beam has a maximum width less than a maximum width of a remainder of the rear portion, the single central beam at least partly disposed inside of the remainder of the rear portion, and the front axle connector is disposed on the remainder of the rear portion at a location intermediate the end of the single central beam and the middle portion, and
wherein the rear portion is configured for towing the towed vehicle in a forward-facing direction.4
Claim 6 was similar, except that its preamble recited “A device for a towing system, comprising” instead of “A towing system, comprising.”5
The district court interpreted the claim term “device” as a universal folding boom trailer. The district court reasoned that, while there was no explicit disavowal of other devices, the specification’s use of the language “present invention” as referring to a universal folding boom trailer implicitly disavowed a claim interpretation not limited to the “universal folding boom trailer.”6
On appeal, the Federal Circuit affirmed. The court explained:
We have held that “the specification may reveal an intentional disclaimer, or disavowal, of claim scope by the inventor. In that instance as well, the inventor has dictated the correct claim scope, and the inventor’s intention, as expressed in the specification, is regarded as dispositive.” … That principle controls this case. Here, the specification makes clear to a relevant artisan that the claims of the ’583 patent require a universal folding boom trailer.7
The court noted that when the specification states the “present invention” includes specific features, this language in the specification limits the legal protection or scope of the invention. The court has explained that “an inventor may disavow claims lacking a particular feature when the specification describes ‘the present invention’ as having that feature.”8
The court observed that the ’583 patent’s specification consistently designated “the present invention” as the universal folding boom trailer. In addition, the specification did not employ the word “device” more broadly when discussing the inventive structure. The specification also linked the benefits of the invention not found in the prior art to the use of the universal folding boom trailer and, therefore, reinforced the determination of disavowal.
The court also remarked that the patent’s title, Universal Folding Boom Trailer, showed “that a relevant artisan would understand that the claims require a universal folding boom trailer.… The title thus reinforces what the written description makes clear.”9 Therefore, the court held that the patent furnishes persuasive support for the decision of disavowal of claim scope not limited to a universal folding boom trailer. The court noted that Wastow failed to put forth any persuasive argument to the contrary. Specifically, the ’583 patent’s specification repeatedly called the universal folding boom trailer part “of the present invention.” In addition, the ’583 patent’s specification consistently stated that “the present invention” had a universal folding boom trailer not associated with just a description of preferred embodiments.10
Wastow advocates that the preamble of claim 6, which is the only place in claim 6 where the word “device” was used, did not limit the claim. The court disagreed and held that the disavowal of claim scope in the specification also applied to claim 6 as well as the other claims. The court therefore held that “the specification’s clear message that the invention is confined to a universal folding boom trailer suffices to make the term ‘device’ in the preamble of claim 6 limiting because it must be understood as defining the claimed invention.11
Important Considerations:
Words matter in the specification as well—including even just the title of the patent application. In Wastow Enterprises, LLC v. TruckMovers.com, Inc., the Federal Circuit held that patent claims missing a particular feature can be disclaimed or disavowed when the specification describes “the present invention” as having or requiring that feature. The court also remarked that even the patent’s title could be used to show that the claims require a specific feature. Thus, patent filers before the U.S. Patent and Trademark Office, as well as patent owners litigating their patents in federal court, may end up with a patent that is narrower than they think.
What’s one to do? This decision demonstrates that patent applications must be drafted correctly in the first instance. The patent application should include or describe any and all technical alternatives to the invention in order to minimize the risk of a disavowal based on the specification. Proper attention must also be given to the appropriate scope of patent claims before the application is filed to ensure that there is sufficient technical description to support the patent claims. Accordingly, a good understanding of the prior art in the field of the invention can be useful to draft the specification and claims. In addition, to the extent possible, a variety of claims should be prepared that provide a variety of inventive features, and claims that range from broad to narrow in scope should also be submitted for maximum benefit and value.
Irah Donner is a partner in Manatt’s intellectual property practice and is the author of Patent Prosecution: Law, Practice, and Procedure, Eleventh Edition, and Constructing and Deconstructing Patents, Second Edition, both published by Bloomberg Law.
1 Wastow Enters., LLC v. TruckMovers.com, Inc., Civ. App. No. 2020-2349, --- F. App’x ----, 2021 USPQ2d 537, 2021 WL 1942350 (Fed. Cir. May 14, 2021) (unpublished).
2 Id., slip op. at 2 (quoting U.S. Patent No. 8,613,583).
3 Id., slip op. at 2 (quoting U.S. Patent No. 8,613,583).
4 Id., slip op. at 2–4 (quoting U.S. Patent No. 8,613,583).
5 Id., slip op. at 4 (quoting U.S. Patent No. 8,613,583).
6 Id., slip op. at 4–5.
7 Id., slip op. at 5 (quoting Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc)).
8 Id., slip op. at 5–6 (quoting Poly-America, L.P. v. API Indus., Inc., 839 F.3d 1131, 1136 (Fed. Cir. 2016)).
9 Id., slip op. at 7.
10 Id., slip op. at 8.
11 Id., slip op. at 9 (internal quotation marks omitted).