A recent appeal pitted two smart wallet manufacturers and their respective patents against each other.  Mosaic Brands, Inc. v. Ridge Wallet LLC addressed two major issues, the sufficiency of proof required when an alleged infringer attempts to prove invalidity using its own prior sales, and whether the District Court correctly imposed an extremely limiting claim construction on Mosaic’s patent claims, rendering them not infringed by Ridge’s products.

 

The way the Federal Circuit addressed the first issue should be reviewed by those wishing to corroborate their prior invention when charged with infringement.  But the second issue raises the question “how?,” as in “how on Earth did the simple claim term ‘lip’ end up construed by both the District Court and the Federal Circuit as a ‘connector made of extrudable or injectable plastic material that defines the outer dimensions of [the wallet] enclosure?’”

 

In the case of Mosaic’s ‘616 patent, the Background Section begins with the following paragraph, with emphasis added:

 

This invention relates to a device for holding paper currency and cards, such as business cards and conventional credit cards. More particularly, the invention relates to a combination card holder and money clip adapted to retain paper currency as well as removably store flexible cards, e.g., credit cards, and sized to be conveniently carried in a pocket or purse. Furthermore, the device of the present invention is constructed of extrudeable plastic materials that can be joined to produce a smooth exterior surface while providing a durable assembly. The device of the present invention comprises three elements that are easily assembled to produce the durable product.

 

Here, even though the background section does not use the term “lip,” the Federal Circuit pointed to the express statements in the background section as applying to all parts of the wallet, including the lip, as part of the “three elements that are easily assembled.”  The panel stated “here, in context, a person of ordinary skill in the art would have understood the ‘present invention’ statements as describing the claimed invention as a whole…the ‘616 patent uses ‘the present invention’ to describe the invention as a whole, thereby disclaiming inventions constructed out of materials other than extrudable plastic.”

 

A patent need not include a background section at all.  Most practitioners use this section to set up a general field of technology to be addressed, and possibly disclose a few prior art references that will later be distinguished in the Detailed Description.  The background section is not akin to an abstract or anything like the introductory section of a scholarly paper.  Good rules of thumb for those writing a background section are:

 

a patent background section should not use the word “invention” as the invention is not background;

 

a patent background section should not identify a problem to be solved, particularly where the client identified the problem during their invention process;

 

a patent background should not identify solutions to problems, these are usually also a part of the invention; and

 

a patent background section, like any other section of a specification, should never use the phrase “the present invention is.”

 

One measure of success for a background section is that, upon reading it from the viewpoint of one who knows nothing about the invention, this should still be true.  As a client or inventor, everything learned during the invention process, if appropriate, should appear in the detailed description of the preferred embodiments.