Also known as: field of invention · technical field
Written by attorneys — see sources below.
A section of a U.S. patent application and any resulting patent that identifies the field of art to which the invention pertains, summarizes the state of the art, and describes the problem solved by the invention. The Background of the Invention section usually includes this subsection along with a Description of the Related Art.
Frederick Ferguson files a patent application for a new high-strength alloy and includes a Field of the Invention section specifying the metallurgy art. He later contracts with Ferrum Metals to license the patent using repeated references to specialized alloy standards without definitions. When a dispute arises over compliance, the court gives those terms their technical meaning because the transaction occurs within the technical field.
Falcon Dynamics files a patent application with a Field of the Invention section describing an intermediated settlement process in the financial technology art. The application uses the section to identify the relevant field of art. The claims later add only generic computer implementation to an abstract idea.
Alice Corporation Pty. Ltd. is the assignee of United States Patent Nos. 5,970,479, 6,912,510, 7,149,720, and 7,725,375. These patents disclose schemes to manage financial risk. The invention enables the management of risk relating to specified yet unknown future events. It relates to methods and apparatus, including electrical computers and data processing systems applied to financial matters and risk management. The claims relate to a computerized scheme for mitigating settlement risk. Settlement risk is the risk that only one party to an agreed-upon financial exchange will satisfy its obligation. The patents claim a method for exchanging financial obligations between two parties by using a computer system as a third-party intermediary. The intermediary creates shadow credit and debit records that mirror the balances in the parties' real-world accounts at exchange institutions. The intermediary updates the shadow records in real time as transactions are entered. This allows only those transactions for which the parties' updated shadow records indicate sufficient resources to satisfy their mutual obligations. At the end of the day, the intermediary instructs the exchange institutions to carry out the permitted transactions. In 2007, CLS Bank International and CLS Services Ltd. filed suit against Alice Corporation in the United States District Court for the District of Columbia. CLS Bank operates a global network that facilitates currency transactions. CLS Bank sought a declaratory judgment that the claims at issue are invalid, unenforceable, or not infringed. Alice Corporation counterclaimed, alleging infringement of the patents. Following the Supreme Court's decision in Bilski v. Kappos, the parties filed cross-motions for summary judgment on whether the asserted claims are eligible for patent protection under 35 U.S.C. § 101. The District Court held that all of the claims are patent ineligible. A divided panel of the Federal Circuit reversed. Upon rehearing en banc, the Federal Circuit affirmed the District Court's judgment. The Supreme Court granted certiorari.
View caseForrest Falconer sues a data broker alleging inaccurate reporting of his information in violation of a federal statute. The complaint references a Field of the Invention section from an unrelated patent only to describe the technical context. The court evaluates standing based on whether the plaintiff alleges a concrete and particularized injury.
Spokeo, Inc. operates a website known as a people search engine. Users can input a person's name, phone number, or email address to conduct searches across a wide variety of databases. The site provides personal information about individuals, including address, phone number, marital status, approximate age, occupation, hobbies, finances, shopping habits, and musical preferences. Thomas Robins discovered that a profile generated about him on Spokeo contained several inaccuracies. These included statements that he was married with children, in his fifties, employed, relatively affluent, and holding a graduate degree, when in fact none of this was true. Robins filed a class action complaint in the United States District Court for the Central District of California against Spokeo. He alleged that the company willfully failed to follow reasonable procedures to assure maximum possible accuracy of consumer reports as required by the Fair Credit Reporting Act. The District Court dismissed the complaint, determining that Robins had not properly pleaded an injury in fact. The Court of Appeals for the Ninth Circuit reversed that dismissal. It concluded that Robins had adequately alleged injury in fact based on the violation of his statutory rights and the individualized nature of his interests in his credit information. The Supreme Court granted certiorari to review the case after the Ninth Circuit's decision in 2014.
View caseThe Background of the Invention section usually includes two subsections: Field of the Invention and Description of the Related Art. The Field of the Invention subsection identifies the field of art, summarizes the state of the art, and describes the problem solved by the invention.
A mistaken inclusion of a reference that postdates the date of invention in the Field of the Invention section may be construed as an admission against the patentee.
When a patent license or related agreement uses technical terms drawn from the field identified in the Field of the Invention section, courts apply the technical meanings of those terms under Restatement (Second) of Contracts § 202(3)(b) unless the parties manifest a different intention.
Supporting sources
…not in fact [of him],” and incorrectly reported that Robins “was in his 50s, . . . married, . . . employed in a professional or technical field, and . . . has children.” Id. , at 14. Robins further alleged that Spokeo’s profile of him continues to misrepresent “that he has a graduate degree, that his economic health is ‘Very…