Intellectual Property Law

Judge Joseph J. Farnan, Jr.: Function of a Comma in Claim Construction

By Karen E. Keller, Andrew A. Lundgren et al.

Judge Farnan found an English professor's declaration opining on the proper function of a comma to be admissible under Rule 702 as part of the claim construction process. To the extent a party argues that it contradicts the intrinsic evidence or the expert does not have relevant technical expertise, however, it will impact the weight the Court gives the opinion. American Patent Development Corporation, LLC v. Movielink, LLC, C.A. No. 07-605-JJF, Memo. Op. (D. Del. Mar. 27, 2009).

The Court also construed the following terms found in the patent-in-suit that relates to a "simple, inexpensive system for limiting the use of a downloaded video program purchased by a customer":

- "a digital data stream comprising said video product, and data establishing a limit for authorized viewing of said video product"
- "a digital data stream comprising said video product, data establishing a time period during which viewing of said video product is authorizied"
- "central station"
- "decoding said data establishing a limit"
- "comparing an output of a local clock signal generator with said result of said decoding step"
- "storing a result of said decoding step"
- "erasing said video product"
- "user site" (the Court found no construction necessary)
- "video product" (the Court found not construction necessary)
- "data establishing a limit for authorized viewing of said video product" (the Court found no construction necessary)

Of note, plaintiff based some proposed constructions on dictionary definitions that postdated the filing of the patent and the Court refused to adopt constructions based on those proposed definitions. Id. at 28.

American Patent Development Corporation, LLC v. Movielink, LLC, C.A. No. 07-605-JJF, Memo. Op. (D. Del. Mar. 27, 2009).

Errata Order

Full post as published by Delaware IP Law Blog on May 06, 2009 (boomark / email).