Today in Secure Web Conference Corp. v. Microsoft, __ Fed App’x __ (Fed. Cir. 2016)(Stoll, J.), the panel sustained patent validity by reading a feature of the preferred embodiments as a limitation to the claims on the basis that such feature was the “essence” of the invention:
“We are mindful not to limit claims to preferred embodiments, but in this case, *** Figures 1 and 2 depict the essence of the claimed invention rather than a preferred embodiment.” (emphasis added)
What is the “Essence” of an Invention, and how is that Relevant? See SRI Intern. v. Matsushita Elec. Corp. of America, 775 F.2d 1107, 1128 n.7 (Fed. Cir. 1985)(en banc)(Markey, C.J., joined by P. Newman, J., additional views)(“Reliance on a finding that [the] ‘essence’ … of a[n] … structural invention lies in the operation of a specification-described embodiment of the claimed structure would render meaningless the statutory requirement for claiming, 35 U.S.C. Sec. 112[.]”); Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 949 (Fed. Cir. 1987)(en banc)(Nies, J., additional views)(“It is axiomatic under our precedent that one cannot obtain patent protection for an …‘essence’ of an invention.…”).
Regards,
Hal
