Federal Circuit Uses Summary Of The Invention To Broaden Recited “Form Set” To Encompass A Single Sheet As Well As Multiple Sheets

In Paymaster Technologies, Inc. v. United States, Civ. Case Nos. 05-5025, 05-5029 (Fed Cir. May 2, 2006), the Federal Circuit affirmed a Court of Federal Claims decision finding the United States was liable under 28 U.S.C. 1498 for the unauthorized use of Paymaster Technologies’ U.S. Patent No. 5,292,283 (the ‘283 patent) based on the United States’ use of money orders.  

The claimed invention of the ‘283 patent is directed to money orders having a form set and which have a sheet allowing ink to permeate from a front of the sheet to a back surface to create a mirror image on the back surface.  The United States was using two types of money orders at issue: a five ply money order having three sheets on which indicia are copied and ink-infused transfer layers between each of the sheets, and a singly ply money order in which the ink penetrates the first sheet and the remaining sheets are stored electronically.  The Court of Federal Claims found infringement under 28 U.S.C. 1498 for both types of money orders.

On appeal, the Federal Circuit agreed with the Court of Federal Claims that the recited form set includes singly ply form sheets, and does not require multiple sheets per form set.  The Federal Circuit noted that, while claims 1 and 5 recite three sheets, claim 10 does not recite multiple sheets.  Further, the specification contained an example of a negotiable instrument sheet as the form set without requiring multiple sheets in the summary of the invention.  While the detailed description had no specific example of a form set with only one sheet, the detailed description was entitled “Description of a Preferred Embodiment.”  According to the Federal Circuit, “it is axiomatic that claims are only rarely, if ever, construed as limited to the preferred embodiment.”  As such, in view of the summary of the invention, the Federal Circuit found that a form set can include a single sheet.

The Federal Circuit further held that the term “on” does not require that the ink “on” the back surface permeate through the back surface so long as the ink is on the surface.  The Federal Circuit noted that this construction is consistent with the specification, is consistent with the extrinsic evidence set forth in dictionaries, and is consistent with the actual usage in the claims. 

Lastly, the Federal Circuit upheld the royalty rate of 3.5% awarded by the Court of Federal Claims. 

Significance to Patent Owners

While applicants are cautioned about use of summaries of the invention, this case shows that the summary of the invention, when well drafted, broadens the scope of the invention by including broad descriptions of elements of the invention.  However, in so doing, applicants need to ensure that the summaries do not limit the scope of the invention by indicating that the invention is only what is set forth in the summary.

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