How can inconsistencies between claims affect their validity?
Inconsistencies between claims can significantly affect their validity by rendering the scope of the claims uncertain. The MPEP 2173.03 addresses this issue:
“In addition, inconsistencies in the meaning of terms or phrases between claims may render the scope of the claims to be uncertain.”
This principle is illustrated in recent case law. For example, in Tvngo Ltd. (BVI) v. LG Elecs. Inc., 861 Fed. Appx. 453, 459-60, 2021 USPQ2d 697 (Fed. Cir. 2021), the court stated:
“The issue is not breadth of the dependent claims but their use of the disputed phrase in a way that contradicts the independent claims. The dependent claims state that ‘said overlay activation criterion includes . . . a user command information,’ which conflicts with the independent claim’s use of this same phrase.”
When faced with inconsistencies, the court advised:
“When faced with this unknown and undefined phrase, a skilled artisan would look for clarification not only in the specification but also in ‘[o]ther claims of the patent in question,’ which ‘can also be valuable sources of enlightenment as to the meaning of a claim term.'”
This guidance emphasizes the importance of maintaining consistency across all claims in a patent application to ensure their validity and enforceability.
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