"The court must properly interpret the claims, because an improper claim construction may distort the infringement and validity analyses."
- Amazon.com v. BarnesandNoble.com (Fed. Cir. 2001)
Staking a Claim - A patent claim is a boundary marking of technology in legal wrapping. Each claim comprises a set of limitations: specific terms or phrases that define the technology covered by the claim. Claim construction is the art of translating patent claim jargon into plain English. Claim construction disputes arise over both the definition of technical terms and semantic interpretation. The outcome of an attempt at patent enforcement commonly hinges on claim construction: the court-accepted definition of specific terms used in patent claims. Patent litigants spend a bucket of money on claim construction. The reason is that claim construction usually determines two root issues of every patent case: whether the plaintiff has a valid claim, and whether the defendant infringed the patent.
A watershed ruling regarding claim construction came from the Supreme Court in Markman v. Westview Instruments (1996). The court ruled that the key question of claim construction was one of law within the sole province of the trial judge. This overruled prior case law permitting juries to determine claim meaning, if the claim was based on an underlying factual dispute, such as conflicting expert testimony.
Markman didn't change the nature of claim construction, only the arbiter. Markman did formalize claim construction as center stage for patent litigation. The effect of the Markman decision was, in many jurisdictions, to add a pretrial phase to litigation in which the litigants battle over the meanings of key terms and phrases found in patent claims. The “Markman ruling" is now ensconced as the pivotal event in patent infringement assessment, in which the judge determines the scope of the patent claims.
A more recent appeals court ruling, Phillips v. AWH, established a evidentiary priority stack for interpreting claims, thus formalizing a method for evaluating evidence related to disputed claim terms. Simply put, the court prefers plain interpretation, unless specific evidence indicates otherwise. Intrinsic evidence related specifically to the patent, such as the specification and prosecution history, is given greater credence than extrinsic evidence, such as dictionaries.
Defining Claims
To properly decipher a patent claim, one must understand the technology behind it. Some technologies have a variable lexicon that lends to claim construction contention; software and business method patents are exemplary. But seemingly simple terms can provoke fierce controversy. The milestone Phillips v. AWH case was about the claim term "baffles".
An inventor may act as his own lexicographer; because of that, patent claims may use terms as specifically defined in a patent specification. This may complicate claim construction, as one must be knowledgeable of both the specific disclosure and the technological context to which a term applies, especially with regard to an accused infringing product.
from patent hawk
