Boilerplate disclaimers characterizing all descriptions in the specification as being directed to preferred embodiments only will be ineffective at best, and may be problematic in establishing adequate written description support. Here, for example, statements that the detailed description is of only “preferred embodiments of the invention” was found to not limit the entire description. “[I]f the general rule against limiting claims in this manner held, then [the patentee’s] proposed understanding would quite severely limit any understanding of the claims in light of the written description … [and] there would be some question as to whether there was the statutorily required written description.” It may therefore be best to avoid general disclaimers characterizing all descriptions in the specification as being directed to only preferred embodiments.
Background / Facts: The patent being asserted here is directed to a socket assembly used in prosthetic hip implants. The claims specify that both a recess and a taper mechanism are used to secure the socket assembly. The recess and the taper are claimed as being “juxtaposed” or in “juxtaposition” with one another and “placed at relative locations such that the effectiveness” of each is “maintained while in the presence of the other.” In two separate passages, the written description explains that the recess is to be placed “essentially midway” along the taper.
Issue(s): Whether the “essentially midway” language in the written description concerns a preferred embodiment or preferred embodiments and therefore cannot so limit the claims.
Holding(s): No. While noting the two boilerplate disclaimers in the specification that the detailed description is of only “preferred embodiments of the invention” and that “[i]t is to be understood that the above detailed description of preferred embodiments of the invention is provided by way of example only,” the court declined to give these statements much weight. “[I]f the general rule against limiting claims in this manner held, then [the patentee’s] proposed understanding would quite severely limit any understanding of the claims in light of the written description. Indeed, there would be some question as to whether there was the statutorily required written description. … We decline to read this written description in such a crabbed manner as [the patentee] suggests. Reading the patent in its entirety, it is clear that such generalized language concerning preferred embodiments, near the start and end of the written description, does not limit the entirety of the intervening section. … In this case, such language merely reflects that this wide swath of the written description may contain descriptions of preferred embodiments, and this is true.”