Claim Construction Deference

Lexicon Medical v. Northgate Technologies and Smith & Nephews (Fed. Cir. 2011)

Judge Rader begins his claim construction decision with an interesting conclusion:

Because the record amply supports the trial court’s interpretation of this claim term … this court affirms.

Of course the Federal Circuit’s en banc decision in Cybor requires that claims be reviewed de novo and without deference to the lower court decision. Thus ,the proper question on appeal is not whether the evidence supports the lower court’s decision but instead whether the lower court made the correct determination. In its actual analysis of the claim construction, the appellate panel here appears to have actually performed a complete de novo review and concluded that, indeed, the trial court’s conclusions were correct. The seeming slip in the opening statement of the opinion is understandable – district court opinions on claim construction should be given some deference.

Part of the trouble with claim construction is that the analysis is rarely a binary decision for the court. Rather, there are often a large number of potential interpretations for any particular claim phrase and, courts typically construe (or refuse to construe) multiple claim phrases. Thus, the idea that a random claim construction should be correct 50% of the time is completely wrong. We also know that well informed, reasonable decision makers often disagree on the particular “best” construction of a particular claim phrase. In a recent article, Peter Menell wrote “If nothing else, the past two decades revealed the inherent difficulties of using language to define the boundaries of abstract and intangible rights.” Menell, Powers, & Carlson, Patent Claim Construction: A Modern Synthesis and Structured Framework, 25 Berkeley Tech. Law Journal 711 (2011).

District courts do make mistakes in construing claims, and those should be corrected on appeal. However, apart from clear district court errors, there is no evidence that the Federal Circuit judges do a better job of construing claims than do district court judges. Offering some deference to district court decisions would give a modicum of finality to those decisions and would give some credence to the reality that claim construction involves substantial factual analysis. In his article, Menell writes that “the Federal Circuit is likely to formally rule that there is a role for district court fact-finding in the claim construction process.” We will be waiting to see if Menell’s prediction comes true.

74 thoughts on “Claim Construction Deference

  1. 74

    I though gary lock and kapos were trying to improve patent quality by rejecting imperfect patents and awarding to the subsequent filers 9who are hackers or uspto insiders stealing the I.P. I have quite a few cases of it in my patent filings can you take a look and see if the patents are sufficient for granting and valuable there at published apps. in my name add ic/myers and they all come up.

  2. 73

    No doubt. But point 3 is the most important for claim construction in courts.

    Claim construction cannot be “abstract.” But that is what you get when you construe terms regardless of their usage in the spec., or if they are not used, the way they are used generally and regardless of the corresponding structure, material and acts.

    In actually claim constructions, it is all about the specification, the prosecution history, etc. I don’t think non litigators really understand what is going on. It is not at all like the PTO where both the examiner and the applicant attempt to construe terms broadly unless the prior art forces a narrower view. I find it interesting that some prosecutors actually believe that the use of broad generic terms or functional language in claims can be construed literally.

  3. 69

    “Because it appeared to be allowable AT THE TIME OF ISSUE? ”

    and what could have happened post issue that made in invalid?

    NOTHING.

    All that could have happened is that that the examiner didn’t do its job properly.

    Why should the inventor be penalized for that?

  4. 68

    Uh, that’s five observations, Ned. Actually more, since you appear to have snuck in a few extra observations in items 2, 3, and 4.

  5. 67

    Just to make this clear: if the order of the steps is important to the invention, I would assume that you would agree that placing the steps out of order in the claim so that the claim would actually read on subject matter not invented would render the claims indefinite, not enabled, not described, etc., etc., etc.

  6. 66

    Malcolm: Order of steps makes no difference?

    The order of steps certainly CAN make a big differnce, Ned, but the mere appearance of the term “steps” in the preamble of a method claim, by itself, signifies nothing about the order in which those steps are carried out.

  7. 65

    The most important thing in claim construction is to recognize and reward conception. This can be accomplished in only a few words in many cases. Whats whrong especially in independant inventor cases is disqualification of claim due to technical imperfection if the developers can advance the invention from whats stated then conseption must be granted of you stiffle inovation and destoy the incentive to create.

  8. 64

    Agreed. I think we need to take a step back an look at the big picture. We should make two or three observations:

    1) The role of claims is to define which of the disclosed subject matter is the invention.

    2) The patent cannot cover subject matter neither described nor enabled. Proof of infringement therefor should require a demonstration of “substantial identity:” that the accused device is the same or an equivalent of claimed subject matter, but that subject matter has to be both described and enabled.

    3) Claim construction cannot therefor be abstract. It has to be limited by the specification, what is disclosed and enabled. In all cases, the claim terms should be given the meaning they are given by the specification. If they are not used in the specification, they should be construed to cover the corresponding structure, material or acts described in the specification.

    4) In the PTO, using BRI, claim terms should not be interpreted as limited to the corresponding structure, etc.; but instead be given the most common meaning as understood by those of ordinary skill in the art. The applicant whould then clarify the meaning of claims by limitation.

    5) In re Donaldson has to be reversed.

  9. 63

    Now Ned, it aint nice ta tease Sunshine with such mental gymnastics (such as they be for Sunshine).

    He might use his usual classy response and swear atcha.

  10. 62

    “If the “proper” construction is broad enough to get invalidated, then why did the examiner allow it?”

    Because it appeared to be allowable AT THE TIME OF ISSUE? Trollface.

    “Let’s assume it was allowed because the examiner didn’t do his or her job and find an important document.”

    No, let’s not assume that. Trollface.

    “If the examiner had done his or her job, then the inventor would have amended the claim in order to have an allowable claim. ”

    Maybe, maybe not trollface. My little friend the WD req oftentimes has a little something to chime in about.

    “Accordingly, what harm is there to allowing the inventor to, through on the record claim interpretation, narrowing the claim in court?”

    That people will be judged infringers when the patent is invalid? Trollface.

    Keep in mind this little thing we have called public notice trollface.

    Seriously lester, why not just tell us straight to our faces that you don’t understand claims what so ever? Just tell us straight up instead of beating so far around the bush.

  11. 60

    Sunshine be in the clowds on yet another O my observations O gold.

    Shouldn’t you busy compiling a 10,000 reference IDS for your client, Les?

    Dont know abouts Les, but these giganormous IDS filings be real easy ta prepare. I done shown ya once way back whens (yeah – before the concept be picked by the so-called hacks that done wrote the i4i briefs and oral arguments), so I’ll let Sunshine go back and find this (as if – he dont think he needs ta read anything for his opinions to be all high-n-mighty).

  12. 59

    Les likes playing ball in the weeds.

    narrowing the claim in court?

    Simple observation: Aint the place.

    Hey, if ya wanna (and if ya meet the other requirements, like for example, lack of deceptive intent, ya can always seek a narrowing reissue on teh grounds that you claimed more than you had a right to.

    Course, if ya do, ya realize that you surrender the C&C of the patent while the examiner takes a gander at your narrowed claims (and that be a difference than doin in Court, wher no surrender of C&C be involved).

  13. 57

    Les some judge somewhere said by calling the elements steps, one implies some importance to the order in which the elements are listed

    LOLOLOLOLOLOL.

    I seem to recall a Federal Circuit decision holding the opposite.

    Shouldn’t you busy compiling a 10,000 reference IDS for your client, Les?

  14. 56

    Les: “…using the word limitation would appear to be an admission that the words in question limit what is covered by the patent….so…we don’t like to use that word either…”

    You don’t like to admit that the words in the claim determine the scope of the claim?

    I can see now why you think claims should be construed by the courts as “whatever the inventor now wishes he’d claimed”.

  15. 55

    “Hardly, the proper construction may very well have been broad enough to get invalidated and he is narrowing it up to avoid invalidity. You know these things lester jester, stop playing coy trying to troll us. Your trolling fun is done son. ”

    If the “proper” construction is broad enough to get invalidated, then why did the examiner allow it? Let’s assume it was allowed because the examiner didn’t do his or her job and find an important document. If the examiner had done his or her job, then the inventor would have amended the claim in order to have an allowable claim.

    Accordingly, what harm is there to allowing the inventor to, through on the record claim interpretation, narrowing the claim in court?

    No harm, no foul.

    Play ball.

  16. 54

    Apart from the gratuitous insult

    What be wrong with a little gratuitousness? It caps the chuckles that 6 done bring.

  17. 53

    I should add, that of those 3 words, I try to only ever use elements.

    Contrary to common practice, some judge somewhere said by calling the elements steps, one implies some importance to the order in which the elements are listed. In correctly that judge apparently found that the claim was limited to the order in which the elements were listed…. so….we don’t call things steps anymore.

    …using the word limitation would appear to be an admission that the words in question limit what is covered by the patent….so…we don’t like to use that word either…

  18. 52

    Nothin leaking sonny-boy.

    Once again the nuances escape Sunshine.

    Try to keep up m’k?

    (resharpens the tip O my pointy stick)

  19. 51

    Apart from the gratuitous insult, new statutes have a habit of overriding old case law. Doubtless 6 would prefer the ‘spark of genius’ standard to prevail, but the 1952 act was expressly intended to throw that out, amongst other things.

  20. 50

    Other than noting that some comment poster above complained about some judged use or alleged confusion between those terms, I don’t know what you are referring to. I’m not aware of any terminological edifice.

  21. 48

    “Thus, the idea that a random claim construction should be correct 50% of the time is completely wrong.”

    This statement is so vacuous that it is completely worthless.

  22. 46

    “If the inventor applies a new interpretation that makes the claim broader, he is limited by the prior art and runs the risk of invalidating the claim…”

    What is your point? Who gives a dam? The question is not “what can a patentee stretch his claims to cover”, the question is “what is the proper construction of the claim”.

    “By policy, the examiner gave the claim the broadest reasonable interpretation (and we all know that the examiners give claims the broadest unreasonable interpretation they can imagine). ”

    So? Who is to say that the patentee’s interpretation would have been reasonable to the examiner? So far as I’m aware you’re not consulting the examiner.

    Look I don’t have all day to deal with your tardation lester jester. Go tell someone who cares about your nonsensical claim construction paradigm.

    “By applying the broadest reasonable interpretation policy, the examiner has more than likely acknowledged that the inventor is entitled to more than originally intended to be captured by the claim. ”

    I will take time out of my day to
    lololololololololololololololololololololol
    @ that.

    “By going on record as narrowing the claim, the inventor is only giving up property to the public. The only one harmed is the inventor. ”

    Hardly, the proper construction may very well have been broad enough to get invalidated and he is narrowing it up to avoid invalidity. You know these things lester jester, stop playing coy trying to troll us. Your trolling fun is done son.

  23. 45

    Don’t know about such all-American things as apple pie but, for the second time of asking, will somebody (preferably Les but, others, feel free) please tell me where the absurd element/step/limitation terminological edifice came from.

  24. 44

    Actually Maxi, it be better than that.

    I dont remember the case (perhaps a homework assignment for Ned or Babbs…?), but there was one that held that an inventor’s recollections of just what his invention is – after teh fact of a patent achieved – is not determinative of what teh invention (as claimed) actually is. Siince teh Office explicitly states that proceedings are governed by what is in writing, it is those writings that are determinative – expressly not an inventor’s later thoughts.

    And O course, I cannot resist muddying the waters be reminding ya that even up to two years after getting a patent, a patentee – by right – may realize that oops – she actually invented more than the invention (as claimed) states in the duly granted patent.

    mmmmmmmm, I smell fluffy apple pie a’comin.

  25. 42

    I can’t believe I just read this:

    “the inventors interpretation of a claim term should be accepted as modified by the prosecution history.”

    above. Is this just Les or does anybody else in the USA adhere to this view.

    In my experience, inventors do not understand much of the script produced by the patent attorney, as the basis of the patent application on the inventor’s creation. Does any other reader recall that famous sequence of drawings that show the progression from what the inventor actually invented, al the way to what the issued claim defines. Hilarious.

  26. 41

    If the inventor applies a new interpretation that makes the claim broader, he is limited by the prior art and runs the risk of invalidating the claim…just as he would have during prosecution. By policy, the examiner gave the claim the broadest reasonable interpretation (and we all know that the examiners give claims the broadest unreasonable interpretation they can imagine). Accordingly, I discount the possibility that the inventors interpretation would be broader than envisioned by the examiner.

    If the inventors interpretation is narrower than that contemplated by the examiner, who is harmed? By applying the broadest reasonable interpretation policy, the examiner has more than likely acknowledged that the inventor is entitled to more than originally intended to be captured by the claim. By going on record as narrowing the claim, the inventor is only giving up property to the public. The only one harmed is the inventor.

  27. 40

    Um, because the patentee also has the most to gain from “modifying” his “interpretationlol” to encompass whatever product/method he wants to accuse of being infringing. And also, because his lawltards will attempt to try to do just that.

  28. 39

    Here’s how claim construction should work:

    1) The Patent is presumed valid. Accordingly, we can assume that the examiner used a claim construction that made the claims valid.

    2) Of all the parties involved, the inventor would appear to be the expert on what the inventor intended to claim as his invention. Accordingly, the inventors interpretation of a claim term should be accepted as modified by the prosecution history. More so if the inventor can cite any reference that supports his use of the term at issue. Again, the presumption of validity…

    3) If it turns out that this interpretation reads on the prior art, then the claim is not valid.

    4) If it turns out that this interpretation reads on the accused infringing device, then it infringes.

    Why would this rule ev er result in an unfair outcome?

  29. 38

    That’s because only someone clinically insa ne like yourself does.

    From an examiner – chuckle city.

  30. 37

    “Rader, the main patent guy in the whole country, appears to recognize no distinction between the terms “element,” “step,” and “limitation.””

    That’s because only someone clinically insa ne like yourself does.

    “It is no wonder that the whole claim construction paradigm is a mess with no consensus on what basic words like “element,” “limitation,” “step” mean.”

    Oh there’s consensus, you’re just ignoring it even as the main patent guy in the country tells you what it is.

  31. 35

    I have to say, from outside the USA, that this terminology element/limitation/step has always puzzled me

    Shockers. Just shockers I tell ya.

    (not)

  32. 34

    faith would you have in an electrician who could not distinguish between “volt” and “wire?”

    Lolz.

    I got just the examiner. Where is that guy who was chasing the electrons leaking out O the end O the wire…

  33. 33

    TJ,

    Your ability to mangle statistics is impressive.

    I love the direction you take – redefine the terms. Do you work in the Office? Have any part in the Duffas efforts to redefine “Quality” (happily proclaimed as near perfect as teh mountains were building)?

  34. 32

    There’s very little the CAFC hasn’t determined to be a ” matter of law”. Effectively, they try many cases de novo spending time on jury fact issues. Whether “fastner” means a screw but not a bolt is for the jury.

  35. 31

    Except that, now the repeat has gone, and the reply to Stuart has appeared. All’s well, it seems (crosses fingers).

  36. 30

    The software is playing up, this morning, it seems. I compose an answer to Stuart, send it, and find my earlier reply to BB presented all over again, see below.

  37. 29

    But Stuart, claim construction is a matter of law, isn’t it? At least, it is in England, where most patent actions don’t go to appeal (because obviousness determinations are founded on findings of fact) but of those that do, the most likely reason is the claim construction thingie.

  38. 28

    I have to say, from outside the USA, that this terminology element/limitation/step has always puzzled me. As far as I know, these labels are used only in the USA. What are they good for? Why do you need them? Where do they come from? Are they decreed by the statute, or by SCOTUS? Why does BB call them “basic”? How much freedom does CJ Rader have, simply to ignore them?

    CJ Rader travels widely, and is often in Europe to debate patent law. Is this where is confusion is coming from?

  39. 27

    Where in the enabling statue is CAFC authorized to conduct de novo review of matters in evidence at the trial court

    A good part of the chaos in our patent law can be traced to the CAFC’s inability to understand what a court of APPEALS does.

  40. 26

    Rader’s own choice of words in insisting on an unambiguous construction is less than reassuring.

    “The district court correctly interpreted “having a temperature within 2°C of the predetermined temperature” not to require the claimed device to always be with [sic] 2°C of the predetermined temperature. ”

    The claimed device doesn’t have any claimed temperature. It is the temperature of the gas that is at issue and that is claimed, and the device maintains that gas temperature. It is not clear that Rader understands the invention well enough to opine on any construction.

    It is also less than reassuring the way the Chief Judge refers to steps (b), (c), and (e) as “limitations.” Steps are elemental features of a method claim; i.e., elements. The way in which the elemental features are modified are the limitations. Rader, the main patent guy in the whole country, appears to recognize no distinction between the terms “element,” “step,” and “limitation.”

    It is no wonder that the whole claim construction paradigm is a mess with no consensus on what basic words like “element,” “limitation,” “step” mean. It’s an embarrassment, actually. Not just to the judiciary, but to the entire profession. How much faith would you have in an electrician who could not distinguish between “volt” and “wire?”

  41. 25

    “the idea that a random claim construction should be correct 50% of the time is completely wrong”

    Well, it depends on what you mean by “correct” and “completely wrong.” In one sense claim construction is binary: the plaintiff either wins or loses under it. So random claim construction should be affirmed or reversed 50% of the time. If by correct we mean a bottom line in the judgment that says “affirmed”, then that common idea is not wrong.

  42. 24

    Hey yous guys guess wut? I just got a piece of paper from the government for some reason or other and it tells me all about my financial stuff for the last year. Now we were discussing this the other day and I figure I should clear everything up since I may have not been quite accurate.

    So, I was paid 74k, and I think I still get the 4k bonus (for the last time this year I might add) so call it 80.

    According to this paper my “total compensation” was 96k.

    The breakdown is:

    For some reason they mention my sick leave that I have right now first. It doesn’t say anything about a certain $ amount.

    FEHB (federal empl. health benefits): 5k

    FEGLI (fed. emp. group life insurance): I paid 294 they paid 147. I get ~230k if I die in an accident, although I’m not 100% sure as to how I’m supposed to collect this if I am dead.

    TSP: I made big contributions and they matched me for 4k (I maxed out their matching and then some). Assuming I continued TSP contributions at the huge rate I currently am making them (lulz yeah right), and 7% growth per year I would have 2M at the age I’m first eligible to retire.

    FERS: Federal Employee Retirement System I paid 600 they paid 8k. I can’t really figure out how much I would get out of this when I’m 57 but it appears that I can at the very least get an annuity with no survivor bene at 2k if I retire at 57. I don’t really know what this means, I’ll look into it when I’m 56 if that day should come.

    SS: Social security I paid 4.3k they paid 4.4k. My benes of course depend on how much I put into the system, which I would hope would be a huge amount because THEY’VE BEEN ROBBING ME EVERY MONTH OF MY LIFE SINCE I WAS 14!

    And that’s about it.

    I mainly posted this to see if IBP’s head would explode. Do let me know if it does.

  43. 23

    “It’s an interesting phrase, and people can differ about what it means, but I doubt that this is a subtle form of civil disobedence.”

    Given Rader’s long track record of disrespect of prior panel decisions, are you sure? He doesn’t behave like Bryson, follow precendent but state his lack of agreement in a concurring opinion. He at times simply will not follow precedent.

    Rich himself was appalled by Rader.

  44. 22

    Hahahahaha – Malcolm is wrong, and plainly so!

    Malcolm relishes in his own ashes. He was quiet last year when Diehr crushed his petty views and now seeks to rewrite history – but it will not happen – Diehr is the one in the trilogy that reigns Supreme – that is the rule as laid down by the highest Court in the land

    6 also is wrong.

    Diehr cabins both Flook and Benson – this is a mandatory majority holding from Bilski

    In attempting to subvert this and apply the law in the wrong order, 6 betrays his wrongfulness.

    Diehr is the crowning decision – take your Stevens minority view and hit the hills!

    ! ! ! – BILSKI 14 – ! ! !

  45. 21

    I doubt it’s a “slip.”

    Judge Rader’s views on the Cybor rule are well known. See his dissent in Amgen link to scholar.google.com
    and his dissent in Cybor link to bulk.resource.org

    Judge Plager’s and Judge Bryson’s separate opinions in Cybor note that the district court’s analysis will carry some weight, as a practical matter, when the court of appeals looks it it. The appellant in any case still has some burden to prove that the decision it’s challenging is “wrong,” and if the appellant fails to convince the court of appeals that there’s anything wrong with the district court’s analysis, the court of appeals will affirm.

    Although CJ Rader’s opinions indicate that he’d like to see Cybor revisited, I highly doubt that he’s trying to smuggle inconsistency into the caselaw by putting phrases such as this into opinions. What I doubt even more is that he let all of his “students” in on this “secret.” It’s an interesting phrase, and people can differ about what it means, but I doubt that this is a subtle form of civil disobedence.

  46. 20

    Sorta like the Big D’s self referncing internal links…

    Shhh student, Sunshine likely ta get angry and swear since this be somethin he dont understand.

    You are not a cancer survivor, are you?

  47. 19

    As a student of Judge Rader, I can tell you that his use of those words was not accidental. This is a matter that the Chief Judge is actively trying to take en banc, and as we know, the best en banc petitions are written through the Federal Circuit Judges’ own statements.

  48. 18

    pot,

    In case ya really are new, ya need ta know that Sunshine’s been strugglin with his Med levels.

    And while big $$$$ are involved in twisting law (in other words, gettin it wrong), those are flowing out from Sunshine (not to him). It be called malpractice.

    The fact he LOL!!!s over gettin the law wrong kinda says it all.

    But you can laugh at him with me if ya wanna.

  49. 17

    You predicted that Diehr would go down in flames and that the “Diehrbots” would be crushed in the Bilski decision.

    How did those apples turn out for you?

    Pretty tasty.

    [looks at giant pile of ash where Bilski’s patent and every one like it once stood]

    Pretty dxmn tasty.

  50. 16

    That’s nice. As a practical matter,” blah blah blah.

    Ya should just stop at “ping, you are right.”

    nor do I recall you correctly predicting the outcome of that case

    So what? You predicted that Diehr would go down in flames and that the “Diehrbots” would be crushed in the Bilski decision.

    How did those apples turn out for you? Hut hut hike!

    so your opinion on the subject is worth less than dogshxt.

    Um, no. My observations be like gold – Really you should know this by now. Only the best minds in the patent biz take my views – O that’s right you believe such are hacks cause they dont agree with you – Med Check on that, m’k?)

    It’s easier to copy and paste.

    Lolz big time at you there Sunshine:

    I actually did cut and paste – from the Law

    So while you may have cut and paste, it wasn’t from the law (at least on this world). Pray tell, where did you cut and paste your blatantly false crrp from?

  51. 15

    ping show me anywhere, anywhere at all I have twisted law (case or legislative) as good Ol Sunshine does

    It’s true, pot. pingaling is not as good at that task as I am. That’s why my clients pay me the big $$$$. LOL!!!

  52. 14

    Bilski said the MOT aint teh law (“manufacturing or transforming”)

    That’s nice. As a practical matter, any method that fails MOT is a likely candidate for crushing under 101, which is why the CAFC and other courts continue to perform the analysis. I’ve never seen you explain what the Supreme Court meant by “abstract” , nor do I recall you correctly predicting the outcome of that case (or any other important case, coward that you are) so your opinion on the subject is worth less than dogshxt.

    rewrite much?

    I wasn’t trying to rewrite. Why would I bother? It’s easier to copy and paste.

  53. 13

    lolz to teh pot – show me anywhere, anywhere at all I have twisted law (case or legislative) as good Ol Sunshine does – where I have simply waived my hand and said “I don’t like it, therefor it is not so.”

    When ya do, maybe, just maybe, ya can throw out that “pot” pseudonym.

    Aint. Gonna. Happen.

  54. 11

    Sunshine, ya seem ta have a real problem understanding that law comes in decisions that you just may not like. Ya need to get back in touch with reality and realize the world dont revolve around your little bad self.

  55. 10

    newly invented processes for manufacturing or transforming compositions and articles of manufacture

    rewrite much?

    35 USC 101: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

    35 USC 100: The term “process” means process, art, or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.

    Funny, your little twist just aint there – process just aint constrained to your “process for”

    Go figure.

    And in case ya haven’t heard by now, Bilski said the MOT aint teh law (“manufacturing or transforming“)

  56. 9

    Re “..apart from clear district court errors, there is no evidence that the Federal Circuit judges do a better job of construing claims than do district court judges.”
    The frequency of the former (needing to be reversed) demonstrates the need for Fed. Cir. claim construction reviews. But isn’t the more serious problem the large number of split Fed. Cir. decisions on claim interpretation due to the widely divergent views on claim scope interpretation between the Fed. Cir. judges themselves, and also confusing District Court judges?
    Yes, claim ambiguity is also a problem, but some Fed. Cir. judges do not need any ambiguity to read far more limitations into claims than other judges would, limit claims to a specification example, or even to declare claims 112 invalid for exceeding a specification example (al la Lizardtech).

  57. 8

    “”If nothing else, the past two decades revealed the inherent difficulties of using language to define the boundaries of abstract and intangible rights.” Menell, Powers, & Carlson, Patent Claim Construction: A Modern Synthesis and Structured Framework, 25 Berkeley Tech. Law Journal 711 (2011). “

    As 6 noted upthread, the purpose of patent claims is not to “protect abstract, intangible rights”. The purpose of claims is to describe newly invented compositions and articles of manufacture, and newly invented processes for manufacturing or transforming compositions and articles of manufacture.

  58. 7

    preceding century of caselaw

    Absolutely clueless and unfounded.

    Seriously 6, ya throw crrp about as if you have any clue. Century? As if.

  59. 6

    t “the Federal Circuit is likely to formally rule that there is a role for district court fact-finding in the claim construction process.”

    ok … so, then, how will Markman hearings be affected, if claim construction involves questions of fact that might properly be reserved to a jury?

  60. 5

    If my memory serves me correct, Rader wrote the dissent in Cybor noting that de novo review should not be the standard because because that destroys the value of certainty and predictability sought by Markman….so maybe it wasn’t an accident what he wrote in the opening line, but rather is more consistent with his view in Cybor.

  61. 4

    With all due respect to Menell, he hasn’t predicted anything. Anyone who follows the court closely knows that many, if not most, of the judges do not like the Cybor rule.

  62. 3

    “”If nothing else, the past two decades revealed the inherent difficulties of using language to define the boundaries of abstract and intangible rights.” Menell, Powers, & Carlson, Patent Claim Construction: A Modern Synthesis and Structured Framework, 25 Berkeley Tech. Law Journal 711 (2011). ”

    Not really, the past two decades has merely shown the increasing attorney/agent incompetence in drafting and the spawning of a whole new paradigm of bs claiming sponsored by the courts. There is no particular challenge involved, simply smack that nonsense down. The foundations of this judicially sponsored nonsense were laid a few decades before the 1990’s with judge rich, god bless his soul, leading the charge to sell out patent drafting to nonsense and denigrating the firm foundations which it had worked so hard to acheive in the preceding century of caselaw.

  63. 2

    Dennis, I’ve heard litigators complain plenty that part of the problem with de novo claim construction is that they conduct a full trial with a court determined construction only to have to do the whole trial again if the construction is reversed or modified.

    Note what happened here, though. On remand from a reversal of claim construction in Lexicon I, the court not only revised the construction accordingly, but then entered summary judgment of infringement, and both were affirmed. The summary judgment was based on the first trial’s jury verdict, with the only new “evidence” being an expert affidavit reassessing the trial evidence according to the new claim construction.

    But the SJ was based on “reassessing” the evidence from the first trial. In authorizing the summary judgment, the Federal Circuit said,

    “The district court permitted Lexion to rely on Burban’s second declaration to show that the accused device delivered gas within 2°C of the predetermined tempera-ture. Burban’s second declaration followed the remand wherein this court provided a new claim construction to the district court. Lexion I, 292 Fed. Appx. at 51-52. This court remanded to permit the trial court to reassess the case in the context of the new claim construction. Id. In that context, the district court had wide discretion to permit the parties to supplement the record with new factual declarations consistent with the new understand-ing of the claim. Bowers v. BayState Techs., Inc., 320 F.3d 1317, 1334 (Fed. Cir. 2003) (a change in claim construc-tion at the appellate level “generally necessitates a re-mand to the district court to consider new factual issues”). In the context of a new claim construction, the district court did not abuse its discretion by permitting Lexion to submit Burban’s second declaration.
    The record also shows that the trial court properly concluded that, drawing all inferences in favor of the non-moving party, Lexion was entitled to summary judgment of infringement. The record shows no material disputes of fact that the accused Humi-Flow device heats and main-tains gas as a “predetermined temperature” within the claimed range, allowing for minor fluctuations.”

  64. 1

    This is about claim construction. My recent article documents the Federal Circuit’s confusion on claim construction. What is not settled, is the proper role of AMBIGUITY in a claim, in claim construction, and if (or if not) said ambiguity militates the use of a context of implication. My article on “context of implication” was published in 2008, and it can be seen from more recent opinions from 2011, that “contexts of implication” continue to be tapped by the Federal Circuit, when embarking on claim construction. THIS IS NOT LEGAL ADVICE.

    Brody, T. (2008) Claim construction using contexts of implication in Virginia Journal of Law and Technology vol. 13, issue 1 (28 pages).

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