© 2002, Gallagher & Dawsey Co., LPA
Does Perpendicular Ever Mean Parallel? The United States Court of
Appeals for the Federal Circuit (CAFC) does not think so! The recent
case of Allen Engr. Corp. v. Bartell Indust., Inc. demonstrates the
importance of a close working relationship between a company and their
Allen Engineering Corporation (Allen) brought suit against Bartell
Industries, Inc. (Bartell) alleging infringement of Allen's U.S.
Patent No. 5,108,220 covering a self-propelled, fast steering
motorized riding trowel for concrete surface finishing.
One, of several, interesting aspects of this case centers on the
second paragraph of 35 USC 112. A requirement of this paragraph is
that the inventor must disclose the invention with sufficient
particularity and distinctness. In analyzing "sufficient particularity
and distinctness," the Court must consider whether "one skilled in the
art would understand the bounds of the claim when read in light of the
Unfortunately for Allen, the claims of the patent at issue utilize the
term "perpendicular" to describe a plane in which a steering box
pivots, while the specification contradicts the perpendicular language
going so far as to disclose that the steering box cannot pivot in the
previously mentioned perpendicular plane. Bartell argued, and the
Court agreed, that the claims that contain this discrepancy are
invalid under the requirements of 35 USC 112.
Allen attempted to extinguish the Bartell argument by arguing that one
with skill in the art would understand that the term "perpendicular"
in the claims should be read to mean "parallel." The Court points out
that "Allen stretches the law too far," and that "it is not the
function of the Court to rewrite claims to preserve their validity."
Therefore, the Court held that the erroneous "perpendicular"
limitation invalidates the claims at issue.
This case exemplified the importance of an inventor's involvement in
the drafting of a patent application, especially in thoroughly
reviewing the entire application. One particularly troublesome trend
is that of inventors simply skimming over the claims when reviewing an
application. Patent attorneys understand that the claims are typically
difficult to read, however the claiming method has evolved over
hundreds of years and inventors must accept that it is unlikely to
change. An attorney should welcome your questions, comments, and
suggestions because this process will ultimately lead to stronger
patents. In the present case, a little additional time reviewing the
application may have prevented the CAFC from vacating the district
court's award in excess of $463,000