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By Dennis Crouch, Esq.
Yesterday raised a valuable discussion on claim construction with many excellent comments on the Cotropia-Bey article. The issue is obviously important since claim construction disputes arise in virtually every attempt to enforce a patent. One problem with claim construction in litigation is that the district court follows a completely different process of claim construction than do PTO examiners. The rules suggest that the two claim construction scopes should form concentric circles with the PTO's broad construction and the Court's narrower construction. The reality is that it is hard to form these concentric circles -- especially with complex claims. And, it is virtually impossible to form concentric circles of construction using such distinct construction processes. Instead of nested constructions, in many cases the outcome of the district court tends to diverge from that suggested during prosecution.
It seems odd that the patent prosecution process does not focus on determining the correct meaning of the claims. The better approach may well be to allow the original examination to determine the correct meaning of claims in a way that can be followed by courts down the line. I suspect that this approach would actually lead to more valid patents -- especially if examiners applied a stronger hand on issues of indefiniteness.
- Joel Miller's 2006 JPTOS article in the Broadest Reasonable Interpretation standard is available here.
- Mark Lemley and Dan Burke recently wrote a paper arguing that we should admit defeat and move to a central claiming system. Their analogy is that claims might be better used as sign-posts rather than fence-posts. [Link]
- Lemley's 2005 article on The Changing Meaning of Patent Claim Terms is also a good read. [Link]
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Jody Madeira on the Legal Constructions of Women in the Infertility and Abortion Contexts
Jody Lynee Madeira (Indiana University Maurer School of Law-Bloomington) has posted Common Misconceptions: Reconciling Legal Constructions of Women in the Infertility and Abortion Contexts on SSRN...
Three disputed claim terms, three revised constructions, one remand
In a recent decision, the Federal Circuit vacated and remanded a district court's judgment of noninfringement based on the parties' stipulation after claim construction. The district court construed three claim terms in a way that the parties agreed rendered all accused products noninfringing, and the plaintiff appealed...
Brennen Presents Diverging Perspectives of "Charitable" Today at Hamline
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Amy L. Wax (University of Pennsylvania Law School) has posted "Diverging Family Structure and 'Rational' Behavior: The Decline in Marriage as a Disorder of Choice" on SSRN. Here is the abstract: The past fifty years have witnessed a growing divergence...
Judge Farnan: Claim Construction
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BPAI's Miyazaki: two or more plausible constructions, out under 112
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Motion to Clarify Claim Construction Opinion Granted
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Two district courts, one correct claim construction; $103 million damage award vacated
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In a recent decision, the Federal Circuit reversed a jury verdict of willful infringement and a total award of over $100 million based on a modified claim construction. The court also reversed the finding that one asserted claim was not anticipated, and remanded the case for a redetermination of infringement and whether the remaining claims were valid...