Claim Construction Validity Claim Construction Comparison of: claimed invention and accused device Claim Construction Tank thereon TTMP Gun Larami Super Soaker A toy comprising an elongated housing [case] having a chamber therein for a liquid [tank], a pump including a piston having an exposed [piston] rod... facilitating manual operation for building up an appreciable amount of pressure in said chamber for ejecting a stream of liquid therefrom... Larami Corp. v. Amron 1
Claim Construction Technical Terms hydroxypropyl methylcellulose oligonucleotide cyclic redundancy repeatedly substantially simultaneously activating Common Terms the a about therein Patent Components Patent Specification Description: description of the technical problem faced by the inventor and how the inventor solves the problem. Drawings: Claim(s): preamble transition body if necessary single sentence rule introduction comprising (open) consisting of (closed) consisting essentially of (hybrid) elements/restrictions A slicing device for cheese and the like, comprising: a base providing a flat cutting surface and having a passageway extending inwardly from an edge thereof parallel to said flat cutting surface and displaced down from the plane thereof; a bar having a generally U-shape with one leg extending into said passageway for pivotal movement of said bar about the axis of said passageway; cutting element a cutting element extending transversely across said base and having one end secured at the pivot axis of said bar; and a handle rotatably rotatably mounted on the other leg of said bar and rotatable about the longitudinal axis of said other leg between a first and a second angular position, said cutting element being secured to said handle at a point displaced from the axis of rotation thereof. 2
Metes and Bounds Patent Claim Limitations A. Rotating Handle B Cutting element attached to bar C Base with passageway D U-shaped bar Deed Legal Description Percentage of Patent Jury Trials (1940-2011) 3
Evolution of Claim Construction Markman v. Westview Instruments, 52 F.3d 967 (Fed Cir 1995) (en banc) aff d 517 U.S. 370 (1996) interpreted scope and meaning of claims as a question of fact during deliberations pre-1995 Court of Appeals Federal Circuit Claim construction = matter Question of law for the court Markman hearing focus on intrinsic evidence Vitronics (Fed Cir 1996) (generally improper to rely on extrinsic evidence ) de novo appellate review (Cybor 1998) notwithstanding trial court s proximity to experts 1995 interpreted scope and meaning of claims as a question of fact during deliberations pre-1995 Evolution of Claim Construction Markman v. Westview Instruments, 52 F.3d 967 (Fed Cir 1995) (en banc) aff d 517 U.S. 370 (1996) Phillips v. AWH Court of Appeals Court of Appeals Federal Circuit Federal Circuit Reversal Rate en banc Claim construction = matter of law 40% Markman hearing focus on intrinsic 30% evidence Vitronics (Fed Cir 1996) (generally improper to 20% rely on extrinsic evidence ) de novo appellate review (Cybor 1998) 10% notwithstanding trial court s proximity to experts 1995 2005 2015 4
v. FRCP 52(a)(6) states that a court of appeals must not... set aside a district court s [f]indings of fact unless they are clearly erroneous. a clear command does not make exceptions or purport to exclude certain categories of factual findings..., [including] both subsidiary and ultimate fact [and to findings made by a] district court sitting without a jury. consistent with Markman, which recognized subsidiary factfinding is sometimes necessary in patent claim construction. The Federal Circuit should have accepted the District Court s finding unless it was clearly erroneous. Proper Framework Uphold subsidiary factual judgments unless clearly erroneous; review ultimate legal determinations de novo PHOSITA Intrinsic Evidence Questions of Fact Mixed Question Questions of Law 5
When the district court reviews only evidence intrinsic to the patent... the judge s determination will amount solely to a determination of law, and the Court of Appeals will review that construction de novo. v. Intrinsic/Extrinsic Evidence In some cases, however, the district court will need to look beyond the patent s intrinsic evidence and to consult extrinsic evidence in order to understand, for example, the background science or the meaning of a term in the relevant art during the relevant time period. In cases where those subsidiary facts are in dispute, courts will need to make subsidiary factual findings about that extrinsic evidence. These are the evidentiary underpinnings of claim construction that we discussed in Markman, and this subsidiary factfinding must be reviewed for clear error on appeal. Chart 5.7 Claim Construction Process 6
Claim Construction Foundational Principles Perspective: Person Having Ordinary Skill in the Art (PHOSITA) Time Period: time of invention (i.e., effective filing date) Principal Source: intrinsic evidence (spec and pros history) as a whole Secondary Sources: extrinsic evidence permissible, but cannot contradict intrinsic evidence No presumption in favor of dictionary definition No heavy presumption in favor of ordinary meaning Description of Invention the present invention distinctions over prior art consistent usage of claim terms in patent and prosecution history Special Cases: patentee as lexicographer specification limits coverage to embodiments ambiguity in claim term may restrict scope to preferred embodiment means + function claims Prosecution Disclaimer surrendering claim scope clear and unmistakable disavowal Ordinary Meaning Claim Differentiation Pure claim differentiation creates a presumption that independent claims are broader than dependent claims may be rebutted based on: specification prosecution history means + function claims cannot trump prosecution history or scope of written description Preferred Embodiment Generally Not Limiting