Agilent Tech., Inc. v. Affymetrix, Inc. (Fed. Cir. 2009)
Agilent’s microarray hybridization genetic analysis patent issued in 2003. After seeing those issued claims, Affymetrix amended a pending application by adding identical claims in order to provoke an interference. The Agilent patent has a priority date of 1998 while the Affymetrix application claims priority back to 1995. The Board of Patent Appeals and Interferences (BPAI) awarded priority to Affymetrix in 2006. That holding was upheld by a N.D. California district court in 2008.
Here, the Federal Circuit reverses – holding that Affymetrix cannot claim priority back to its 1995 filing because that original application “does not satisfy the written description requirement for the claims at issue.” Written description is particularly relevant in interference cases where one party typically copies claims from another patent document.
Claim Construction in an Interference: Several articles have been written on the complicated and ever-changing scope of a patent claim. At the PTO, claims are usually given their broadest reasonable meaning while in litigation, courts look for how a PHOSITA would interpret the scope, etc.. Phillips teaches that proper claim construction looks at the literal language of the claims as well as supporting information from the specification and prosecution history. In an interference, however, the copied claims originally came from another application.
Faced with a split of precedent, the Federal Circuit here decided to continue with multiple interpretations of an individual claim. Following Spina, the court holds that – for the purposes of the written description requirement – the newly added claims should be interpreted based on the specification and history of the opposing source application. However, following Rowe, the Federal Circuit held that for the purposes of novelty and nonobviousness, the newly added claims should be construed based on the specification and history of the amended application.
To be clear, as this court explained in Rowe, when a party challenges written description support for an interference count or the copied claim in an interference, the originating disclosure provides the meaning of the pertinent claim language. When a party challenges a claim’s validity under § 102 or § 103, however, this court and the Board must interpret the claim in light of the specification in which it appears.
This change in primary interpretative materials allowed the Federal Circuit to also change the claim construction and consequently hold that Affymetrix’s application “does not satisfy the written description requirement for the claims at issue.”
Notes:
As a pending application, Affymetrix’s claims had no presumption of validity. “Thus, Agilent’s burden of proving a lack of written description in Affymetrix’s Besemer application is a simple preponderance of the evidence. Eli Lilly & Co. v. Aradigm Corp., 376 F.3d 1352, 1365 (Fed. Cir. 2004).”
ICU Medical v. Alaris Medical System (Fed. Cir. 2009)
This is the second post on the ICU case. Part I discusses the $4.6 million award of attorney fees to the accused infringer based on the patentee’s litigation misconduct.
The district court found several of ICU’s claims invalid for lack of written description under 35 U.S.C. § 112, ¶ 1. On appeal, the Federal Circuit affirmed. (Judges Michel (CJ), Prost, and Moore; Opinion by Moore). Although similar to enablement, the written description requirement pushes an applicant to “convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention.” Most often, written description arises in cases where new matter is added to the claims during prosecution. That is also the case here – during prosecution ICU amended its claims to include “spikeless” claims — directed to a valve mechanism for adding drugs to an IV without using needles.
To be clear – the original claims included the “spike.” That element was removed during prosecution – seemingly broadening the claims. As the court stated “we refer to these claims as spikeless not because they exclude the preferred embodiment of a valve with a spike but rather because these claims do not include a spike limitation—i.e., they do not require a spike.” It is that failure to include any discussion of a spike in the claim that lead to the claim being held invalid for lack of written description.
The Federal Circuit does not cite Gentry Gallery or the infamous “omitted element” or “essential element” theories. However, the court does rely heavily on LizardTech. In that case, the court did not point to any claim limitation that was not sufficiently described. Rather, the court found the claim invalid because an embodiment arguably covered by the claim was not sufficiently disclosed.
We addressed a similar issue in LizardTech . . . We explained that “the specification provides only one method for creating a seamless DWT, which is to ‘maintain updated sums’ of DWT coefficients. That is the procedure recited by claim 1. Yet claim 21 is broader than claim 1 because it lacks the ‘maintain updated sums’ limitation.” We determined, however, that “[a]fter reading the patent, a person of skill in the art would not understand how to make a seamless DWT generically and would not understand LizardTech to have invented a method for making a seamless DWT, except by ‘maintaining updat[ed] sums of DWT coefficients.'” We therefore concluded that claim 21 was invalid under the written description requirement of § 112, ¶ 1.
In LizardTech, the court explicitly rejected the argument that the written description requirement “requires only that each individual step in a claimed process be described adequately.”
In this case, ICU’s original disclosure focused on spiked embodiments, but the more generic claims are not so limited.
ICU’s asserted spikeless claims are broader than its asserted spike claims because they do not include a spike limitation; these spikeless claims thus refer to medical valves generically—covering those valves that operate with a spike and those that operate without a spike. But the specification describes only medical valves with spikes.
Since all the embodiments included the “spike,” the court concluded that “Based on this disclosure, a person of skill in the art would not understand the inventor … to have invented a spikeless medical valve.”
Invalidity affirmed
Notes:
This case also includes an important discussion of claim differentiation that will be dissected in a later post.
Of course, this case suggests the best patent drafting practice of providing multiple embodiments of each claim element, and considering whether each and every limitation in the broadest original claims are necessary.
ICU broadened its claim by dropping a limitation — did ICU introduce new matter?
In a powerful rhetorical approach, Judge Moore chose to refer to the broad claims as “spikeless claims.” As mentioned, those claims do not include a “spikeless” limitation. Rather, they simply omit a “spike” element. As it turns out more than 99.9% all patent claims issued in 2008 are silent about “spikes,” and under the traditional interpretation of the “comprising” transition – all those claims would literally cover embodiments without spikes. The holding here cannot be that all those claims are invalid. I believe that the holding here is largely a result of the fact that the accused device was in-fact spikeless. Unfortunately, this decision does not provide helpful guidance as to when it will apply. Rather, it appears to simply be an additional vague tool available to defense attorneys.
The court did not mention enablement – since it was easy to remove the needle from a syringe and the disclosure includes a preslit seal that could arguably work with a spikeless syringe. That modification would have been enabled based on the original disclosure.
Wheeler’s patent application covers a fishing pole with an illuminated transparent rod. A light in the handle illuminates the whole rod. The BPAI found the invention anticipated by another illuminated fishing rod patent. On appeal, however, the Federal Circuit reversed.
The difference is one of claim construction. The BPAI held that the claim only required a portion of the rod be illuminated, but the Federal Circuit interpreted the claims to require that the entire rod be illuminated. Since the prior art only disclosed a partially illuminated rod, the question of anticipation turned on this claim construction issue.
PTO Claim Construction: As with district court decisions, BPAI claim construction decisions are reviewed de novo on appeal. However, the law of claim construction allows the PTO to construe claims much more broadly than would a district court. In particular, during prosecution, claims are given their “broadest reasonable interpretation to facilitate precision in claiming.” Of course, even at the PTO “claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.”
Here, Wheeler’s patent claims “an illuminated fishing pole…made from a transparent, flexible material.” The specification also states that the entire fishing rod is transparent and lighted along its length. Applying its interpretation, the Federal Circuit found that the claim required that the entire rod be transparent and lit. Because that limitation was not found in the prior art, the claim is considered novel.
Acting sua sponte, a BPAI panel recently entered a new ground for rejection against an IBM patent application: That the claimed process is unpatentable subject matter based on the Federal Circuit’s recent en banc decision in Bilski. The claim is directed to a method of optimizing relational database queries and appears to be specifically directed to speeding up queries where a table is joined to itself. Although the preamble does focus on a “relational database management system,” the body of the claim does not refer to any specific machinery beyond queries, sub-expressions, rows, and sets.
The legal point to consider from this case is that the PTO will apply its “broadest reasonable” claim interpretation during its §101 analysis. Here, the BPAI panel found that the broadest reasonable interpretation of IBM’s claim does not necessarily “require computer or machine implementation” and thus that the claim fails the “tied to a particular machine” prong of Bilski machine-transformation test.
“Claim 1 does not recite any steps that necessarily involve machine implementation. While the preamble of claim 1 recites a “system,” the “system” of claim 1 is not recited in terms of hardware or tangible structural elements. Rather, the “system” could be a software system, where the elements of claim 1 are implemented solely in software or algorithms. Thus, the nominal recitation of a “system” in the preamble does not transform claim 1 into patentable subject matter under § 101.”
The BPAI also found that the claim “does not call for any transformation of an article to a different state or thing, nor does it require any transformation of data or signals.” Based on the claimed step of “reforming the query,” I would argue that the claim does require a transformation, but that transformation does not satisfy Bilski because the thing transformed (the query) is not “representative of physical objects or substances.”
Notes & Comment
In the appeal, the BPAI overturned the examiner’s obviousness rejection based on the absence of a “self join” in the cited prior art.
The disputed claim:
1. A method for optimizing a query in a relational database management system, the method comprising:
evaluating the query to determine whether a sub-expression of the query is being joined to itself and whether a predicate of the query comprises an equality test between a same column of the sub-expression;
determining whether a first row set producible from a first set of references of the query to the sub-expression is subsumed by a second row set producible from a second set of references of the query to the subexpression; and
reforming the query to eliminate the joining of the sub-expression to itself based on evaluation of the query and determination of whether the first row set is subsumed by the second row set.
The Buszard application is directed to a flame retardant composition that includes a flexible polyurethane foam base. The PTO Patent Appeal Board rejected Buszard’s patent application as anticipated by a prior patent.
On appeal, the CAFC reversed — Judge Newman penned the opinion that focused on the PTO’s practice of giving claims their ‘broadest reasonable interpretation.’
“Buszard’s specification and claims specifically state the requirement of a flexible polyurethane foam…. No matter how broadly “flexible foam…” is construed, it is not a rigid foam…. The [cited prior art] reference describes only a rigid foam reaction mixture that produces a rigid product. Only by mechanically crushing the rigid product into small particles is it rendered flexible, as a rock can be mechanically crushed to produce particles of sand. This description cannot reasonably be construed to describe, and thus to “anticipate,” the flexible foam product of a flexible foam reaction mixture. We agree with Buszard that it is not a reasonable claim interpretation to equate “flexible” with “rigid,” or to equate a crushed rigid polyurethane foam with a flexible polyurethane foam.”
Interestingly, Judge Newman’s claim construction intertwines analysis of the claim language with analysis of the scope of prior art disclosure. Although the PTO may give an applicant’s claims broad interpretation — the scope of the prior art cannot extend beyond its disclosure.
Judge Prost dissented. In Prost’s view, any ambiguities in patent claim terms should be construed against the patentee during prosecution of the patent. That approach avoids the usual ‘guessing game’ of Phillips-style claim construction and it is quite easy for an applicant to make clarifying amendments to claim language.
The key to more efficient patent examination is to go beyond thinking about what patent examiners do, to consider how the nature of the examination process affects the behavior of inventors and firms. To put it crudely, if the patent office allows bad patents to issue, this encourages people with bad applications to show up. While the increase in the rate of patent applications over the last two decades is driven by many factors, one important factor is the simple fact that it has gotten so much easier to get a patent, so applications that never would have been submitted before now look like they are worth a try. Conversely, if the PTO pretty consistently rejected applications for bad patents, people would understand that bad applications are a waste of time and money.
Unlike tangible forms of property, such as real estate, patent boundaries are almost always poorly defined. Many patents are written in vague or obscure language, claim construction procedures are uncertain and vary from judge to judge, existing claims are hidden in the pipeline at the Patent Office, and the use of abstract terms allows patents to cover far more technology than what was actually invented. One sign of how difficult it is for people to determine exactly what a patent does and does not cover is the fact that more than a third of all district court judges, after performing a thorough analysis of a patent’s claims, have their construction of those claims reversed by the CAFC.
If Federal Judges can’t agree on what claim terms mean, how can we expect the average American business person or individual inventor to do so. . . . .
[I]n order to address the problem of fuzzy patent boundaries, a patent’s validity should always be analyzed according to the broadest reasonable interpretation of its claims, because that is the construction of the patent that the public will generally abide by until the patent is reviewed by a court, and the currently dormant statutory prohibition against indefinite claim language should be awakened and strengthened.
High rates of technological innovation, especially in the 1990s but continuing to this day, suggest that the patent system is not broken and does not require fundamental changes. Nevertheless [we should address] . . . consistent patent quality . . . harmonization . . . publication [of all filed applications] . . . [reducing] litigation costs . . . [and] patent thickets.
The [FTC] Report recommended creation of a new administrative procedure for post-grant review and opposition that allows for meaningful challenges to patent validity short of federal court litigation. Existing means for challenging questionable patents are inadequate. Patent prosecution is ex parte, involving only the PTO and the patent applicant, even though third parties in the same field as a patent applicant may have the best information and expertise with which to assist in the evaluation of a patent application.
Notes:
I’m ignoring the HR977 that would end gene patenting because it is going nowhere. It would add the following language: `Notwithstanding any other provision of law, no patent may be obtained for a nucleotide sequence, or its functions or correlations, or the naturally occurring products it specifies.’.
S. 316, on the other hand, may get some legs. That bill would eliminate generic reverse payments. Leahy
In Re Michael C. Scroggie (Fed. Cir. March 13, 2006) (NONPRECEDENTIAL)
by Joseph Herndon
In a non-precedential opinion, the Fed. Cir. affirmed in part and reversed in part a decision of the USPTO Board of Patent Appeals (the “Board”). Mr. Scroggie appealed the Board’s decision affirming a final rejection of his patent application having claims directed to a method for generating a web page (including the limitations “generating page data” and “personalized web page”).
The Fed. Cir. stated the general principle that since during prosecution, claims “must” be given their “broadest reasonable interpretation,” this court reviews the Board’s interpretation of disputed claim language to determine whether it is “reasonable” in light of all the evidence before the Board.
Scroggie argued that a hyper-link is not a web page, but rather a logical address that when selected, directs the user to a known web page. The Fed. Cir. agreed and held that the term “generating page data,” as recited in the claims, requires that page data is “generated,” not merely “selected.” The court stated that the asserted prior art, which teaches “selecting” advertisements that contain hyper-links, does not teach or suggest “generating.” Thus, the Fed. Cir. held that the Board’s construction of “generating page data” was unreasonable and its conclusion that the prior art teaches that limitation was unsupported by substantial evidence.
On another note, the court further held that a web page may be considered “personalized” because (i) the contents of the page transmitted to the user are themselves specific to the user, or (ii) the page was chosen to be transmitted to a user based on the user’s personal data. In this case, the court noted that because the term “personalized web page” can reasonably be construed to mean either type of “personalized,” and because the prior art discloses the latter type, the claims including this limitation were reasonably interpreted by the Board and its conclusion that the prior art teaches this limitation was validly supported by substantial evidence.
The Fed. Cir. did not elaborate on any requirements for the Board to meet the “reasonable interpretation” requirement, or the amount of evidence that would be sufficient to do so.
Note: Joseph Herndon is an assiciate at the intellectual property firm of McDonnell Boehnen Hulbert & Berghoff. Joe has a stellar background in electrical engineering and handles both patent prosecution and litigation. herndon@mbhb.com.
Although the CAFC affirmed the B.P.A.I’s use of a dictionary in defining the patent applicant’s claim terms, the court did so only because the patent specification did not otherwise provide any limits the terms. The court thus indicated that the PTO should apply the principles of Phillips v. AWH during prosecution — rather than the PTO’s current practice of giving claims their “broadest reasonable interpretation.”
In addition, the court provided an excellent review of its string of precedents concerning the standard for combining references in an obviousness rejection:
Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1385 (Fed. Cir. 2001) (“In holding an invention obvious in view of a combination of references, there must be some suggestion, motivation, or teaching in the prior art that would have led a person of ordinary skill in the art to select the references and combine them in the way that would produce the claimed invention.”);
In re Dance, 160 F.3d 1339, 1343 (Fed. Cir. 1998) (“When the references are in the same field as that of the applicant’s invention, knowledge thereof is presumed. However, the test of whether it would have been obvious to select specific teachings and combine them as did the applicant must still be met by identification of some suggestion, teaching, or motivation in the prior art, arising from what the prior art would have taught a person of ordinary skill in the field of the invention.”);
In re Fine, 837 F.2d 1071, 1075 (Fed. Cir. 1988) (there must be “some objective teaching in the prior art or that knowledge generally available to one of ordinary skill in the art would lead that individual to combine the relevant teachings of the references”);
Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1143 (Fed. Cri. 1985) (“When prior art references require selective combination by the court to render obvious a subsequent invention, there must be some reason for the combination other than the hindsight gleaned from the invention itself.”).
Be aware that this particular issue is being considered by the Supreme Court in KSR v. Teleflex. This decision solidifies the CAFC’s position and increases the odds that KSR will be taken-up on certiorari. As noted by Professor Wegner, the Johnston panel “says nothing about the Anderson’s-Black Rock or Sakraida Supreme Court standard of patentability” that is the subject of the KSR case.
* Cite as Dennis Crouch, Patent Examiners Should Interpret Claims In Light of Specification, Patently-O, January 30, 2006 at https://patentlyo.com.
For those who have not followed this case, the Federal Circuit has decided to rehear the Phillips v. AWH in order to determine the proper method of construing claim language of a patent. The two major theories of claim interpretation involve (i) the use of dictionaries and (ii) the use of the patent documents filed by the inventor.
The government brief argues that dictionaries should not be a primary reference for claim construction, in part because dictionaries are not used by examiners during prosecution. This assertion by the government certainly overstates the facts. When an examiner starts at the PTO, they are given a copy of Webster’s. Examiners also regularly use www.Dictionary.com to find various definitions for terms. While it is true that the Examiner rarely explicitly relies on a dictionary in an office action, the definition of terms is always in the background. For instance, examiners often use the dictionary to examine the clarity of the claims and as a way to asses the scope of terms used in the application.
Although this discrepancy was not raised in any of the briefs, it may come up in oral arguments slated for Tuesday, February 8, 2004.
UPDATE I: L&C Law Professor Joseph Miller, in his recent article on the role of dictionaries, has noted that ‘[w]e know anecdotally that examiners sometimes cite and quote dictionary definitions in their interactions with patent applicants.’ Manuscript page 50. Miller and his co-author James Hilsenteger cite Cordis v. Medtronics, 339 F.3d 1352, 1359 (Fed. Cir. 2003), as a case where the examiner used the definition of the claim word ‘slots’ from Webster’s Ninth New Collegiate Dictionary to help explain to the applicant how a prior art reference showed the claimed structure.
UPDATE II: I received a comment from a former USPTO primary examiner who made several points:
The example cited in Professor Miller’s article of an examiner citing a dictionary definition in an office action is the exception rather than the rule.
The Office did not emphasize the use of dictionaries to assign meaning during training. (although dictionaries may have been mentioned in training sessions as ‘available sources for determining the meaning of a claim term’)
Rather, examiners are primarily taught to give each claim term its "broadest reasonable meaning."
"The examination process is so fast-paced that I believe examiners do not use any formal methodology when construing claims. Instead, an examiner relies more on intuition, on what a word or phrase means to him or her. If a word is foreign to an examiner, he or she would likely consult a dictionary, but only to get a "feel" for the word.
Field Reporter Needed: I am not going to be able to attend the Phillips v. AWH rehearing, but I would like to post an article on the oral arguments written by an attending patent attorney. Let me know if you would like to write a brief article (<750 words) on the topic for the Patently-O Blog. (We operate on same-day service, so you would need to write it within a couple of hours after hearing the arguments). You’ll get some good publicity — we have a fairly wide circulation with over 10,000 hits each week from people working in the patent field. (crouch@mbhb.com). Also, I would like to post an .mp3 file of the oral arguments if anyone would be willing to get the set of tapes from the clerk and convert them.
The newsletter discusses the PTO’s Image File Wrapper (IFW) system and outlines many problems and proposes solutions. For example:
Problem: Examiners’ greatest complaints with IFW, by far, relate to the multitude of scanning errors that create documents improperly entered in the file record, amendments and office actions entered days, weeks, or months late, documents filed under the wrong tabs, and more.
POPA Solution: Better training for scanning contractors; immediate e-mail forwarding of scanned documents to the appropriate examiner; scan-on-demand service centers in each technology center.
Other proposed solutions include better indexing of non-patent literature (NPL) and caching of IFW files so that the examiners can work with a file when the PTO’s system is down. As Greg Aharonian has repeatedly stated, improving the ability of examiners to search prior art will result in a better system for everyone involved.
Interestingly, the POPA Newsletter also discussed upcoming Phillips v. AWHen-banc hearing from the point-of-view of patent examiners.
Examiners are trained to interpret the claims as broadly as possible unless the applicant has explicitly provided a definition to the contrary in the specification or if the specification provides an explicit disclaimer. Examiners are permitted to use dictionaries and other extrinsic evidence to determine the broadest reasonable interpretation.
My review of the briefs filed Phillips will be published in next Month’s issue of Patent World.
Update: A regular reader of the Patently-O Blog wrote in on the subject of scanning errors. In his well reasoned view, the PTO should simply have patent attorneys electronically submit PDF documents to the Office. Then, there would be no scanning errors.
—–Original Message—– From: XXXX Sent: Wednesday, November 10, 2004 10:33 PM To: Crouch, Dennis Subject: Patent Office Professional Association (POPA) Proposes Solutions to Examination Problems
Examiners’ greatest complaints with IFW, by far, relate to the multitude of scanning errors that create documents improperly entered in the file record, amendments and office actions entered days, weeks, or months late, documents filed under the wrong tabs, and more
Scanning errors? I think they are missing the big picture. When I file anything at the Trademark Trial and Appeal Board, I simply upload a pdf (rendering scanning errors impossible-but I guess there are still some font issues). Regardless, uploading pdf documents is so fast, so checkable (did that just work?), so simple, soooo why doesn’t the patent office get it?
As I sit here and wait for my USPTO fax back at 10:31 PM.
As you may know, the Phillips case, which is presently awaiting decision en banc, is expected to be the next major decision impacting the issues of claim construction.For those who are interested, here is a rundown of some of the Amicus Briefs that were filed in the appeal:
1. United States Patent and Trademark Office (USPTO): The Patent Office took the position that dictionaries should not be a primary reference for claim construction, in part because they are not used by examiners during prosecution. The PTO brief was filed jointly with the DOJ and FTC.
2. Intellectual Property Owners (IPO): The IPO brief, argues that the primary evidence of claim meaning should be found in the patent specification and prosecution history. If a court must resort to extrinsic evidence to determine claim meaning, there should be no pre-determined hierarchy of importance. The Court should only consider claim construction evidence in the record on appeal. The IPO brief was written by Paul Berghoff and Josh Rich of MBHB LLP.
3. Electronic Frontier Foundation (EFF): Judges should invalidate and Patent Office Examiners should reject ambiguous claims. Claims should be given their broadest possible construction during prosecution and narrowest reasonable meaning thereafter.Professor Joshua Sarnoff is the Counsel of Record on the EFF brief.
4. American Bar Association: Neither the specification nor dictionary should have primacy. Invalidity should play no role in claim construction, as that approach is contrary to the public notice function. The Appellate Court should defer to findings of fact made during claim construction.
5. American Intellectual Property Law Association (AIPLA): The fundamental standard that should govern claim construction is that a claim term must be construed from the perspective of a person of ordinary skill in the relevant art at the time the patent issued seeking to understand the term’s meaning from a study of the entire intrinsic record.
6. Intel, IBM, Google, Micron, and Microsoft: Where those construing patent claims focus on dictionary meanings of claim terms without an appropriate grounding in the specification and prosecution history, there is a danger the interpretation of patent claims will differ markedly from the true scope of the invention they seek to define. Indeed, there are so many different dictionary definitions for any given word that it is impossible to predict with any confidence what meaning a court will choose. The Intel brief was written by Stanford professor Mark Lemley.
7. Federal Circuit Bar Association (FCBA): Dictionaries should not be the primary focus of claim construction. Claim construction may require findings of fact, which should be reviewed for clear error.
8. International Trade Commission Trial Lawyers Association (ITCTLA): The specification and prosecution history should control. When dictionaries are used, technical dictionaries should have a rebuttable preference over general dictionaries. Claim language should not be narrowly construed for the sole purpose of avoiding invalidity. The claim interpretation should not be limited to only the embodiment described in the specification. Expert testimony should be allowed and evaluated as would any other piece of evidence. Deference to the trial court’s claim construction may be appropriate in some cases.
9. Biotechnology Industry Organization (BIO): Specification first. Dictionaries second, when specification does not establish meaning of claim terms. Claims should never be narrowly construed for the sole purpose of avoiding invalidity.
11. Professors Wagner & Miller: The professors argue that the patent document should be the primary and preferred source of claim meaning — as long as it is clear, specific, and objective. Where the term is not clearly defined in the patent document, there should be a heavy presumption in favor of the ordinary meaning of the term. Dictionaries are not a panacea, but they offer the best opportunity to provide a term’s ordinary meaning with clarity, certainty, and predictability.
12. Public Patent Foundation (PUBPAT): Dan Ravicher of PUBPAT argued that "claim construction should never be impacted by considerations of validity." Consistent with Markman, subsidiary factual determinations by the trial court during claim construction should be reviewed for clear error.
13. Intellectual Property Law Association of Chicago (IPLAC): Courts may look to the plain meaning of claim terms but asserts that dictionaries should in general be subordinate to the patent specification and other intrinsic evidence when determining what is meant objectively by challenged claim terms. Dictionaries may be considered, but the guiding light must be what the hypothetical ordinarily skilled artisan would have understood by the claim terms – not in a vacuum, and not armed with only a technical or general purpose dictionary, but also with the full panoply of intrinsic evidence. Courts may receive expert witness testimony on this determination. Edward Manzo wrote the brief for IPLAC, and was given assistance by Brad Lyerla, Dean Monco, Pat Burns and Tim Vezeau.
14. Association of Corporate Counsel: Public notice is best served by first looking at claims, specification and prosecution history. Dictionaries should not be the primary source for claim construction. Because the guiding inquiry is the meaning of terms to those of ordinary skill in the relevant art, relevant technical dictionaries should usually be consulted before general dictionaries.
15. Infineon: The public notice function of patent claims is best served by looking first and foremost to the intrinsic specification, not an extrinsic dictionary definition, to interpret claim terms.
16. Boston Patent Law Association: Dictionaries should not be the primary source of claim construction because they do not stay current, are not necessarily authoritative, and because meaning is not always found in books. Validity and claim construction should be kept separate.
18. Medrad, Inc: Claim construction should be based upon the intrinsic evidence (spec, drawings, cited prior art, and prosecution history).
19. NYC Association of the Bar: Dictionary definitions should not provide the primary source of meaning or a separate restriction on claim coverage. Validity should be considered during claim construction. Expert testimony can provide important information. Deference to the trial court’s claim construction findings is blocked by procedural and practical obstacles.
26. Sughrue Mion: Claims should be interpreted as of the time of filing or earlier. The patent document provides the best notice of the claim’s meaning. Deference should be accorded to a trial court’s factual findings underlying claim construction.
Link: My review of the case published in Patent World magazine.
ASIDE:
Interestingly, Mr. AWH Phillips was a famous economist who discovered a consistent inverse relationship between the rate of wage inflation the rate of unemployment.
Ex parte Koo (
Myers