The meaning of “predetermined”

“Predetermined” is a very popular word in the vocabulary of the patent attorney. In fact, we notice that the claims of almost 16% of US patents issued in 2005 contain this word. It is of particular interest, therefore, to patent draftsmen and women that the Patents Court in the UK has considered the meaning of the word in some depth.

 

Nikken Kosakusho Works v. Pioneer Trading Co. [2005] FSR 15

Nikken sued on their UK patent, directed to a drilling chuck. Claim 1 recited a chuck comprising, inter alia, “an annular groove of predetermined depth”. This was the only phrase in the claims which related to the groove depth, and the claims themselves gave no objective means of ascertaining the depth in question. A prior art document showing a chuck with a groove (and the groove had a depth), The patentee relied on the word “predetermined” to distinguish over the art.

The patentee submitted that “predetermined depth” meant of a depth sufficient to achieve “the object of the invention”. The Judge, Mr Justice Mann, did not accept that construction, and held that in this case such an approach would only add to the uncertainty surrounding the scope of the claims; it was further noted that the object to be achieved by use of the “predetermined depth” was not made at all clear.

It is trite law in the UK (and across Europe) that the claims are to be interpreted in accordance with the description. The patentee therefore put forward the alternative construction that “predetermined depth” meant “approximately 3-5 mm”, that being a depth indicated for an embodiment in the description. However, this was also rejected on the grounds that these values related to a preferred embodiment, giving them an air of preference rather than requirement. Further, the Judge indicated that the values were not even a range, but rather an approximation of a range, which did not recite a clear meaning that would assist the patentee’s case.

Instead, the defendant’s submission that “predetermined depth” meant any groove having a depth determined in advance was accepted, and claim 1 was held to be anticipated by the cited art.

After trial, the patentee applied to amend the claims to specify a groove depth of approximately 3-5mm, but discretion to amend at this late stage was refused. That refusal was upheld on appeal (Nikken Kosakusho Works v. Pioneer Trading Co. [2006] FSR 4).

 

Comment

Setting aside the broader philosophical question of predestination, almost any element of a cited prior disclosure will be determined in advance by whoever designed or manufactured it. The term “predetermined” as interpreted by the UK Court should therefore not be assumed to imply a meaningful limitation which might help distinguish over prior art. Likewise, an alleged infringement will usually be determined in advance by someone – usually the infringer – and is therefore unlikely to provide an escape route to avoidance of the patent claim. The word will therefore usually have little effect – except perhaps in claims reciting events or actions which must occur in sequence, in which case “predetermining” something may imply determining it prior to some other event. It seems that the term should not be routinely used, in the UK at least, without some thought as to its meaning. Where it is used to qualify a value (as here “predetermined depth”), it is advisable to provide examples having clear and plainly defined values or ranges and to clearly state any objectives which are achieved by the value, in case amendment is desirable – in Nikken, amendment before litigation (rather than after losing) might have saved the patent.