Climate change has made companies consider the impact their businesses have on the environment. To help counteract the effects of transit, manufacturing, and general pollution, some companies are developing and investing in green, or ecofriendly, technologies. As just a few examples, some companies have begun creating compostable packaging, utilizing machines that pull pollutants out of the air, and even reconsidering the ingredients in their products (to create so-called “greened-down products”). Other companies may not do so, however, because they lack a proper incentive to invest in green technology. Patents, and the exclusionary rights they afford may provide that incentive.
A recent climate change presentation at the AIPLA Mid-Winter meeting sparked a conversation about how to structure patent claims to best define the scope of the invention. More specifically, how to determine which transitional phrase should be used to connect the preamble to the body of the claim. Each phrase carries with it a different scope and corresponding legal consequence. For example, “comprising” is an open-ended term that allows for inclusion of unspecified ingredients. “Consisting of,” on the other hand, is a closed term, and courts have generally interpreted claims with this phrase to cover only the combination of specified components recited in the body of the claim, i.e., no more and no less.
This raises the question of whether “consisting of” claim language can be used in the fight against climate change? The answer may be “yes.” Using “consisting of” claim language to eliminate or minimize ingredients in products may be a useful tool in patenting green technology and promoting the innovation needed to fight climate change.
The meaning of “consisting of” with respect to the scope of a claim is best explained by example. If a claim is directed to a combination “consisting” of elements A and B, it is likely that the claim will not literally read on or cover the combination of elements A, B, and C. This would be true even if component C makes up only a small part of the combination as a whole, unless, for example, component C is a very small impurity that would be difficult to remove. A claim containing the “consisting of” transitional phrase is thus considered “closed” to additional, unrecited elements.
In Norian Corp. v. Stryker Corp., 363 F.3d 1321, 1331 (Fed. Cir. 2004), the Federal Circuit held that the presumption that the term “consisting of” closes a claim to other components does not apply to aspects that are unrelated to the invention. See also, Conoco, Inc. v. Energy & Environmental Int’l, L.C., 460 F.3d 1349 (Fed. Cir. 2006). In Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp., 831 F.3d 1350 (Fed. Cir. 2016), the Federal Circuit explained that “[t]he presumption that a claim term set off by the transitional phrase ‘consisting of’ is closed to unrecited elements is at least a century old and has been reaffirmed many times by our court and other courts.” Id. at 1358. “[T]o overcome the exceptionally strong presumption that a claim term set off with ‘consisting of’ is closed to unrecited elements, the specification and prosecution history must unmistakably manifest an alternative meaning.” Id. at 1359.
Drafting Claims to Protect Green Technology
Using “consisting of” in claims may be a way to protect green technology. For example, claiming an invention that eliminates or minimizes ingredients may provide a strategy for green tech to obtain valid and enforceable patents that cover greened-down products. Consider the ingredient label for the cookies, Fig Newtons:
Let’s assume there was environmental pressure to reduce the ingredients down to Figs, Whole Grain Wheat Flour, Invert Sugar, Unbleached Enriched Flour, Sugar, and Salt. Let’s further assume those ingredients would make a palatable (and patent eligible) cookie.
If you claim a cookie comprising Figs, Whole Grain Wheat Flour, Invert Sugar, Unbleached Enriched Flour, Sugar, and Salt, wouldn’t that claim be anticipated by the ingredient label above? The claim would likely also have been obvious over the ingredient label.
But now, what about a claim to a cookie consisting of Figs, Whole Grain Wheat Flour, Invert Sugar, Unbleached Enriched Flour, Sugar, and Salt? You might argue that the claim is not anticipated by the label, because all the unnamed ingredients are expressly excluded. And perhaps you might argue that the “consisting of” claim is nonobvious over the old ingredient list because the old ingredient list teaches away from the closed combination of Figs, Whole Grain Wheat Flour, Invert Sugar, Unbleached Enriched Flour, Sugar, and Salt.
As efforts to patent green technology move forward, this “consisting of” theory will be interesting to watch whether it is utilized to protect new inventions that eliminate unwanted ingredients to satisfy green technology standards.