In several recent decisions, the United States Court of Appeals for the Federal Circuit has established that a patentee’s express words, as disclosed in the specification, may be read into the claims to limit the scope of the invention. In addition, the Federal Circuit in Scimed and Bell Atlantic has held that not only may a patentee explicitly limit a claim term in the specification, but she may also do so “by implication.” Thus, a specification may inherently limit the scope of a claimed invention constituting what the author calls the “inherent limitations doctrine.” This new wrinkle in claim interpretation will likely produce a wave of confusion for future litigants and judges. This Comment proposes that if the Federal Circuit does apply the inherent limitations doctrine at all, the court should do so prospectively. This Comment also proposes a set of factors the court can use to determine where to apply the doctrine.
Adam G. Kelly, The Inherent Limitations Doctrine: How the Specification May Inherently Limit the Scope of the Claims, 1 J. Marshall Rev. Intell. Prop. L. 124 (2001)