•  
  •  

Home > IPLJ > Vol. XXXIV > No. 4 (2024)

 

Abstract

A little-known but longstanding rule of patent law is that the article “a” means one or more than one when recited within a patent claim. But the commonly understood meaning of “a” is a numerosity of just one. The case of Salazar v. AT&T Mobility is about the misapplication of the patent law general rule of indefinite articles to find that the term “a microprocessor” means just one microchip. That fundamental tenet states that “a” means one or more than one, unless a patentee disavowed that meaning as evidenced by: (1) other language of the claims (i.e., dependent claims or other text of the claim at issue), (2) the remainder of the specification (e.g., the detailed description or figures), or (3) statements recorded in prosecution history. Unfortunately, the courts did not properly apply the general rule. Rather, the Federal District Court, for instance, relied on the recitation of definite articles that referred back to the phrase “a microprocessor” as an exception to the general rule. But such language does not invoke a patentee’s intent about numerosity but rather is required by the antecedent basis rules of the Patent Office. This rationale is more akin to the common understanding of “a” rather than the patent law rule. A fair reading of “a microprocessor” as recited in the claims is that the phrase means either one or more than one—nothing recited therein would prevent either interpretation. The Federal Circuit fared no better in its analysis. There the court made misstatements of law concerning the transitional phrase “comprising” invoking the general rule. But transitional phrases affect the scope of the claims as a whole, not individual terms recited therein. Further, the court relied on flawed precedent that also neglected to look at the best evidence (i.e., the rest of the patent specification) to determine an inventor’s intent. Consequently, the courts’ decisions in Salazar offer incomplete analyses of the issue justified by other precedent with piecemeal, claim-centric reasoning. Absent anything more (i.e., other limiting claim language or statements in the specification or prosecution history), the courts should have ruled the other way. But there was more. The patent included a robust description of the invention that evidenced a clear intent that the claims be limited to a single microprocessor. Thus, the courts arrived at the correct conclusion but for all the wrong reasons. And this is unfortunate because the courts’ claims-only approach eliminates the rule of indefinite articles altogether. The decisions now make a singular meaning of indefinite articles a guaranteed result.

Download

Share

COinS