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[khazzah]

I know lots of practitioners that insist on adding "etc" to almost every list in the spec. Obviously, the idea is that you don't want your claim to be limited to only the items in the list, so you hope that throwing in "etc" now covers everything that you didn't list.

IMHO, excessive use of "etc" detracts from readability.

Some questions for the board.

• One, does "etc." really accomplish this? 
• Two, any downsides?
• Three, suppose my list is something like: "a laptop, a desktop, a server, a media player, a PDA, etc." What do you think about replacing "etc." with a generic class noun: "or any computing device"?

I suppose the obvious difficulty with Three is coming up with an appropriate class noun. I've seen some lists that are a mixture of items at different levels of specificity, which makes it even harder (e.g., "TCP/IP, Ethernet, WiFi, 802.11").

[JimIvey]

I have no problem using "etc."  I also mix in "for example" and "and such."  I hate "and the like."

As for "or any computing device", I tend to write it the other way around:  "any computing device such as a laptop, a desktop, a server, a media player, a PDA, etc." 

And, of course, take care in the "any computing device" because those things tend to end up as claim language -- at least that's where I often try to reduce a thing to its essence in broad terms.  So, I find composing such language a convenient place to start thinking in terms of broad coverage.

Regards.

[klaviernista]

Typically, I use language similar to "non-limiting examples of component X include A, B, C, D . . .  and mixtures, emulsions, and suspensions thereof."  While I don't necessarily believe that there is anything wrong with using "etc." in the specification, I imagine the term could be considered ambiguous in certain instances, possibly to the point of raising a written description issue. 

Regardless, I always try to use the same phrase when describing multiple exemplary lists in the specification.  This is because the cannons of statutory construction and Federal Circuit case law suggest that using the same language indicates that the same meaning was intended, whereas the use of different language suggests that a different meaning was intended.  There is no need to invite the Federal Circuit to quibble over whether lead in language such as "for example, component X may include . . ." has the same meaning as other lead in language, e.g., "in some embodiments, component X includes. . . ."

Of course, this can result in an application have a very stilted, almost robotic feel.  But the point is to draft an application that covers a client's invention and which will be interpreted in a somewhat predictable way, not to win a pulitzer.

[smgsmc]

I don't care for "etc" , "and such", and "and the like" because they don't add any value.  They leave it up to the reader to fill in the blanks as to what the generic class is.  So what's the point?  I also use Jim's construct:  start with the generic class and then give specific examples.

"A user uses a communications device to send data to and receive data from a network server.  Examples of communications devices include a desktop computer, a laptop computer, a PDA, and a cell phone.  Data is typically transmitted according to industry-standard network protocols; examples of industry-standard network protocols include TCP/IP, Ethernet, and WiFi.  Data may also be transmitted according to proprietary network protocols."

Question for klav:  I often see the conservative wording:  "Examples include, but are not limited to, A, B,and C." or "Non-limiting examples include A,B,C."  I even had an in-house counsel insist that I revise "Examples include A,B,C." to "Examples may include A,B,C."  Is there any case law in which "Examples include A,B,C." was actually declared to be limiting? 

[JimIvey]

Question for klav:  I often see the conservative wording:  "Examples include, but are not limited to, A, B,and C." or "Non-limiting examples include A,B,C."  I even had an in-house counsel insist that I revise "Examples include A,B,C." to "Examples may include A,B,C."  Is there any case law in which "Examples include A,B,C." was actually declared to be limiting? 

My apologies for stepping in to respond to the question to Klav....

First, I hate "may".  It connotes uncertainty.  Do the examples include A, B, and C or don't they?  "May" suggests you don't really know.  I read one spec in which every sentence included "may or may not" (except the ones that should have included it).  Those sentences tell you nothing.  If I tell you that I may or may not send you $20 by paypal tomorrow to your e-mail address on your profile here, have I told you anything?  Anything at all?  I don't think I have.  Remove all the "may or may not" sentences from that one spec and there was nothing left, except claims.  Useless.  (Note: in most cases, you can just use "can" instead of "may" -- "can" connotes ability rather than uncertainty.)

As for caselaw on spec examples being limited, I'm not aware of any aside from Section 112, paragraph 6 language.  And, I never use that construct.

And now, for a perspective....  I think that, in most cases, practitioners would do much better to take some of the effort they put into injecting vagueness and ambiguity into the spec and use that effort to get the claims right.  Just introduce examples as such and never describe "the present invention" directly (including aspects or objects thereof).  Then, get the claims right.  Litigators enforcing my work have never told me they wished I had more "may or may nots" in the spec.  Just my thoughts on the topic.

Regards.

[ChrisWhewell]

If I write that teeth may be whitened according to one non-limiting exemplary embodiment of the invention by contacting a tooth surface with a peroxidated form of inositol hexaphosphate, is such a statement problematic with regard to the use of may or the invention ?

[klaviernista]

First, I hate "may".  It connotes uncertainty.  Do the examples include A, B, and C or don't they?  "May" suggests you don't really know. . . .  

And now, for a perspective....  I think that, in most cases, practitioners would do much better to take some of the effort they put into injecting vagueness and ambiguity into the spec and use that effort to get the claims right.  Just introduce examples as such and never describe "the present invention" directly (including aspects or objects thereof).  Then, get the claims right.  Litigators enforcing my work have never told me they wished I had more "may or may nots" in the spec.  Just my thoughts on the topic.

Jim:  Fully agree with respect to getting the claims right.  Everyone agrees that the claims are the most important part of any application. 

With respect to the specification, my opinion is that it needs to serve three functions.  First, and most importantly, it must satisfy the requirements of 35 U.S.C. 112 with respect to the claimed invention.  Second, it must provide sufficient flexibility to allow the applicant to take an alternative position, in the event that an examiner digs up solid prior art.  Third, and only slightly less important than the first function, the specification should be drafted such that it does not encourage a court to interpret the claim language in an unintended manner, or in an unexpected way.

Now, before you all start reciting the age old mantra that limitations from the specification are not to be read into the claims, the plain and simple fact is that there is tons of case law where the Federal Circuit has done just that.  Indeed, in Phillips v. AWH, the court stated that "The specification is always highly relevant to claim construction and is the single best guide to the meaning of a claim term in dispute.”  There are innumerable cases where a court has used language from the specification to limit the scope of a claim term.  See, e.g.,  Inpro II Licensing, S.A.R.L. v. T-Mobile USA, Inc., 450 F.3d 1350 (Fed. Cir. 2006) (interpreting the claims in view of a "very important" feature recited in the specification); Bayer AG v. Elan Pharmaceuticals Research Corp., 212 F.3d 1241 (Fed. Cir. 2000)  (interpreting claim language in view of a "special" or "peculiar" feature in the specification);
Atofina v. Great Lakes Chemical Corp., 441 F.3d 991 (Fed. Cir.), reh’g denied (2006) (interpreting claims in view of statements in the specification re: "necessary" features of the invention); Pharmacia & Upjohn Co. v. Mylan Pharmaceuticals, Inc., 170 F.3d 1373 (Fed. Cir. 1999) (interpreting the claims in view of language in the specification emphasizing "key" or "critical" elements).  The list goes on and on.  There is even a case where the court used terms such as "invention is" in the specification to limit the scope of the claims under consideration.  See C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858 (Fed. Cir. 2004)


With these cases in mind, there is nothing in the law that requires the specification of an application to be "exact" or "certain."  Rather, the specification need only: 1) describe the claimed invention in sufficient detail such that one of ordinary skill in the art can make and use it without undue experimentation, and 2)describe the best mode known by the applicant at the time the application was filed (which is easily accomplished with a few non-limiting examples).  As long as those two requirements are met, the case law (in my view) clearly suggests that the specification should avoidstatements which characterize the invention in a concrete way.  As I have said before and I will reemphasize here, such statements can come in the form of statements which define what the invention is, as well as statements that define what the invention is not. 

All that said, I agree with you that "may" connotes uncertaintly.  But when I use it in a specification, it is precisely because the term does not connote a precise meaning.  That is the benefit of using the term.  Can other language achieve the same purpose? Sure.  But it will have the exact same ambiguous quality as the term "may."

Of course, all these comments are my own, and do not constitute legal advice.  Rely on them at your own risk.

[klaviernista]

Question for klav:  I often see the conservative wording:  "Examples include, but are not limited to, A, B,and C." or "Non-limiting examples include A,B,C."  I even had an in-house counsel insist that I revise "Examples include A,B,C." to "Examples may include A,B,C."  Is there any case law in which "Examples include A,B,C." was actually declared to be limiting? 

I haven't researched the issue, and I imagine that the answer would be fact dependent.  However, the CAFC has held that "where the specification makes clear at various points that the claimed invention is narrower than the claim language might imply, it is entirely permissible and proper to limit the claims.” Alloc Inc. v. ITC, 342 F.3d 1361 (Fed. Cir. 2004), citing  SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1345 (Fed. Cir. 2001).  So if your claims recite that "element X comprises A, B, and C," but your specification repeatedly describes element X as "including A, B, and C" and no other alternatives, than it is possible that a court might latch onto the language in the specification to interpret the scope of the claims.

Of course, it should be noted that courts generally only construe claim terms that are deemed unclear.  So if the claims are written properly and with definite terms, the risk posed by the specification is substantially lessened.  However, I would venture to guess that most practitioners will agree that how a court will interpret claim terms is quite unpredictable.  Thus, it is best to hedge against the risk at the drafting stage, becauseyour options for doing so during litigation will likely be limited and/or extremely expensive.

[DogDayPM 9er9er9er]

Of course, it should be noted that courts generally only construe claim terms that are deemed unclear.  So if the claims are written properly and with definite terms, the risk posed by the specification is substantially lessened.  However, I would venture to guess that most practitioners will agree that how a court will interpret claim terms is quite unpredictable.  Thus, it is best to hedge against the risk at the drafting stage, becauseyour options for doing so during litigation will likely be limited and/or extremely expensive.

Also note that what is deemed unclear (and gets briefed for the Markman) is largely by (dis)agreement of the parties and what the Judge will let them get away with arguing.

My last 2 Markman orders were 140+ pages, and about 15 pages.  On the first one, the defendant wanted to argue every aspect of the claims in suit (less than 10 claims) and was trying to ascribe ridiculous meanings to plain terms.  The Judge, bless his heart and the hearts of his clerks, did an incredibly detailed job of weighing both sides on each issue and clearly stating in the order the basis for deciding one way or the other. 

In the second one, there were tons of claims because the Judge couldn't understand the need for making the plaintiff narrow down her case.  To Klav's point, the independent claims all contained a word that was defined in the spec using the phrase, "my invention is a [term of art] compound having A, B and C, where C has X and Y".  Although in several of the plaintiff's broadening continuation filings various of A, B or C were left out of the independent claims, and in some claims C was present but did not recite both of X and Y, each claim did recite "a [term of art] compound".  We got the Judge to go with the idea that whether A, B and C, and C having X and Y, were all verb sap in an independent claim was immaterial because [term of art] must be construed as always having A, B and C, and C must always have X and Y.

[JimIvey]

If I write that teeth may be whitened according to one non-limiting exemplary embodiment of the invention by contacting a tooth surface with a peroxidated form of inositol hexaphosphate, is such a statement problematic with regard to the use of may or the invention ?

You've picked the one context in which I use "may" -- to connote uncertainty.  For example, "the user may decide that the list is to be sorted chronologically."

I don't see a problem in either context for your statement.  That assumes you meant to say "It is unknown but theoretically possible for teeth to be whitened ...."  If you want to say something more like "one ... embodiment has the ability to whiten teeth", use "can" instead.

As for avoiding limitations in the spec, I believe it's enough to describe only illustrative embodiments of the present invention directly, without waffling with "may," "can," etc.  In your statement, I think "non-limiting" is superfluous.  In addition, I think you're a bit over-the-top redundant with that qualifications as an embodiment.  I think it's fine to say "an embodiment according to the present invention" or "an illustrative embodiment of the present invention."  For style reasons, I don't like "exemplary".  To me, it suggests that this embodiment is better than others, like a perfect model of an embodiment.  It seems to invite importation of embodiment particulars into the claims more than "illustrative" embodiments, which just serve to illustrate something.

Regards.

[JimIvey]

With respect to the specification, my opinion is that it needs to serve three functions.  First, and most importantly, it must satisfy the requirements of 35 U.S.C. 112 with respect to the claimed invention.  Second, it must provide sufficient flexibility to allow the applicant to take an alternative position, in the event that an examiner digs up solid prior art.  Third, and only slightly less important than the first function, the specification should be drafted such that it does not encourage a court to interpret the claim language in an unintended manner, or in an unexpected way.

Precisely.  Over-qualifying, over-muddying, and excessive openness of the specification can leave it short of meeting goal number one.  That's my point.  Much of the qualifying, muddying, and opening-up I see are excessive in view of what's needed for goal number three and verge on cutting into goal number one.

For what it's worth, I think you've listed those functions of the specification in order of decreasing importance.  Yet, I see many specifications that appear to have been written with the order of important of those three functions reversed.

Now, before you all start reciting the age old mantra that limitations from the specification are not to be read into the claims, the plain and simple fact is that there is tons of case law where the Federal Circuit has done just that. 

All the case law that I've seen on the topic goes way beyond failing to put "may or may not" in every sentence.  Nearly always, the specification in those cases includes some statement that immediately make me say, "Oh, now why would you want to say that?"  They tend to be direct descriptions of "the present invention".  Sometimes, a specification says this or that feature, function or element is "essential" or "critical".  I've never seen an opinion (particular Fed Cir.) that says that an illustrative embodiment of the invention was limiting because the specification didn't say the embodiment was not limiting.

Indeed, in Phillips v. AWH, the court stated that "The specification is always highly relevant to claim construction and is the single best guide to the meaning of a claim term in dispute.”  There are innumerable cases where a court has used language from the specification to limit the scope of a claim term.  See, e.g.,  Inpro II Licensing, S.A.R.L. v. T-Mobile USA, Inc., 450 F.3d 1350 (Fed. Cir. 2006) (interpreting the claims in view of a "very important" feature recited in the specification); Bayer AG v. Elan Pharmaceuticals Research Corp., 212 F.3d 1241 (Fed. Cir. 2000)  (interpreting claim language in view of a "special" or "peculiar" feature in the specification); Atofina v. Great Lakes Chemical Corp., 441 F.3d 991 (Fed. Cir.), reh’g denied (2006) (interpreting claims in view of statements in the specification re: "necessary" features of the invention); Pharmacia & Upjohn Co. v. Mylan Pharmaceuticals, Inc., 170 F.3d 1373 (Fed. Cir. 1999) (interpreting the claims in view of language in the specification emphasizing "key" or "critical" elements).  The list goes on and on.  There is even a case where the court used terms such as "invention is" in the specification to limit the scope of the claims under consideration.  See C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858 (Fed. Cir. 2004)

Precisely.  Good examples of things to avoid (unless you really mean them, really intend them to be limiting).

All that said, I agree with you that "may" connotes uncertaintly.  But when I use it in a specification, it is precisely because the term does not connote a precise meaning.  That is the benefit of using the term.  Can other language achieve the same purpose? Sure.  But it will have the exact same ambiguous quality as the term "may."

Okay, you've lost me here.  Why would you ever want to include a sentence without a precise meaning in a specification?  Once you've said that the description merely provides illustrative embodiments as examples to teach one to make and use these embodiments of the invention as defined by the claims and does not define the invention and then avoid contradicting that statement throughout the specification, why do you need to say that the embodiment may or may not be implemented in a computer, that such a hypothetical computer may or may not include digital logic, that such hypothetical digital logic -- if included in the computer that may or may not be used to implement the illustrative embodiment -- may or may not be implemented in a field-programmable gate array, etc.?

If you feel the need to vitiate a sentence of its meaning, you ought to rethink whether the sentence ought to be in the specification at all or whether there is some direct point that the sentence is to make.  If the latter, write the sentence so that it makes the point directly.

Personally, I think "may" should be completely relegated to describing stochastic processes.

Regards.

[smgsmc]

Question for klav:  I often see the conservative wording:  "Examples include, but are not limited to, A, B,and C." or "Non-limiting examples include A,B,C."  I even had an in-house counsel insist that I revise "Examples include A,B,C." to "Examples may include A,B,C."  Is there any case law in which "Examples include A,B,C." was actually declared to be limiting? 

I haven't researched the issue, and I imagine that the answer would be fact dependent.  However, the CAFC has held that "where the specification makes clear at various points that the claimed invention is narrower than the claim language might imply, it is entirely permissible and proper to limit the claims.” Alloc Inc. v. ITC, 342 F.3d 1361 (Fed. Cir. 2004), citing  SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1345 (Fed. Cir. 2001).  So if your claims recite that "element X comprises A, B, and C," but your specification repeatedly describes element X as "including A, B, and C" and no other alternatives, than it is possible that a court might latch onto the language in the specification to interpret the scope of the claims.

Of course, it should be noted that courts generally only construe claim terms that are deemed unclear.  So if the claims are written properly and with definite terms, the risk posed by the specification is substantially lessened.  However, I would venture to guess that most practitioners will agree that how a court will interpret claim terms is quite unpredictable.  Thus, it is best to hedge against the risk at the drafting stage, becauseyour options for doing so during litigation will likely be limited and/or extremely expensive.

But this isn't the situation we are addressing. "Compound W includes indium, phosphorus, and arsenic."  is a different construct from "Examples of Compound W include indium phosphide and indium arsenide."    I can see how you might run into problems with the first construct (as discussed in your example above), but I don't see how I would run into problems with the second construct.

[smgsmc]

Question for klav:  I often see the conservative wording:  "Examples include, but are not limited to, A, B,and C." or "Non-limiting examples include A,B,C."  I even had an in-house counsel insist that I revise "Examples include A,B,C." to "Examples may include A,B,C."  Is there any case law in which "Examples include A,B,C." was actually declared to be limiting? 

My apologies for stepping in to respond to the question to Klav....

First, I hate "may".  It connotes uncertainty.  Do the examples include A, B, and C or don't they?  "May" suggests you don't really know.  I read one spec in which every sentence included "may or may not" (except the ones that should have included it).  Those sentences tell you nothing.  If I tell you that I may or may not send you $20 by paypal tomorrow to your e-mail address on your profile here, have I told you anything?  Anything at all?  I don't think I have.  Remove all the "may or may not" sentences from that one spec and there was nothing left, except claims.  Useless.  (Note: in most cases, you can just use "can" instead of "may" -- "can" connotes ability rather than uncertainty.)

As for caselaw on spec examples being limited, I'm not aware of any aside from Section 112, paragraph 6 language.  And, I never use that construct.

And now, for a perspective....  I think that, in most cases, practitioners would do much better to take some of the effort they put into injecting vagueness and ambiguity into the spec and use that effort to get the claims right.  Just introduce examples as such and never describe "the present invention" directly (including aspects or objects thereof).  Then, get the claims right.  Litigators enforcing my work have never told me they wished I had more "may or may nots" in the spec.  Just my thoughts on the topic.

Regards.

I agree that "may or may not" is nonsense.  But I don't see "may" as connoting uncertainty and "can" as definite.  There could be similar problems with "can".  Take a statement such as:  "A communications device may [can] exchange data with a server over a "wired" link or a "wireless" link.  Examples of wired links include twisted-pair cable, coaxial cable, and optical fiber.  Examples of wireless links include RF, microwave, and free-space optics."

To me, in this context, "may" means "it is possible to".  So, if "can" means "it has the ability to", then they are are essentially equivalent.  But isn't "can" equivalent to "capable of"?  I believe there was a previous discussion on that.  Some say "capable of" is vague, because it doesn't say that it actually does something.  So, if we insist on positive recitation of actions, don't we then need:  "In some embodiments, a communications device exchanges data with a server over a wired link.  In other embodiments, a communications device exchanges data with a server over a wireless link."  I'd appreciate people's thoughts on this.

[ChrisWhewell]

How about:  "In some embodiments, the halogen may be fluoride"  or, "in some embodiments, the switch may be a router", or   "A polygon may be a square".    That last one is a clear statement of fact, illustrating that it is possible to state facts using the word "may".  A statement in a reply to an OA that says "Support for the amendment for claim 6 may be found in the original spec at col. 8, line 4." is a similar statement. 

If I write on the internet "whitening teeth may be accomplished by contacting peroxidated IP6 to a tooth surface", and then wait 366 days before filing my spec in the US on this use for this particular heretofore unknown material, would it be reasonable to argue that my statement on the internet doesn't qualify as a basis for a 102 ? 

Not every use of "may" introduces uncertainty, although in some instances, it may.  If I tell my daughter she may take my truck and credit card to the mall, I guarantee there'd be no uncertainty from her side and she'd be out of here like a shot 

[ChrisWhewell]

If I write that teeth may be whitened according to one non-limiting exemplary embodiment of the invention by contacting a tooth surface with a peroxidated form of inositol hexaphosphate, is such a statement problematic with regard to the use of may or the invention ?

You've picked the one context in which I use "may" -- to connote uncertainty.  For example, "the user may decide that the list is to be sorted chronologically."

I don't see a problem in either context for your statement.  That assumes you meant to say "It is unknown but theoretically possible for teeth to be whitened ...."  If you want to say something more like "one ... embodiment has the ability to whiten teeth", use "can" instead.

As for avoiding limitations in the spec, I believe it's enough to describe only illustrative embodiments of the present invention directly, without waffling with "may," "can," etc.  In your statement, I think "non-limiting" is superfluous.  In addition, I think you're a bit over-the-top redundant with that qualifications as an embodiment.  I think it's fine to say "an embodiment according to the present invention" or "an illustrative embodiment of the present invention."  For style reasons, I don't like "exemplary".  To me, it suggests that this embodiment is better than others, like a perfect model of an embodiment.  It seems to invite importation of embodiment particulars into the claims more than "illustrative" embodiments, which just serve to illustrate something.

Regards.

The best way may be to just come out and say it:   "Tooth surfaces are whitened in some embodiments by contacting them with any IP6 di-peroxide."