Chapter 15 Outline

JurisdictionUnited States

Chapter 15

Patent Claim Interpretation

§15.01 The Central Role of Patent Claims

§15.02 Judge Versus Jury as Interpreter

[A] Pre- Markman
[B] Markman v. Westview (U.S. 1996)
[C] Markman Hearings
[D] Must a District Court Always Expressly Interpret Claim Terms?

§15.03 Evidentiary Hierarchy for Claim Interpretation

[A] Intrinsic Evidence
[B] Extrinsic Evidence
[C] "Contextualist" Versus "Literalist" Approaches
[D] The En Banc Phillips Decision (Fed. Cir. 2005)

§15.04 Canons of Patent Claim Interpretation

[A] Perspective: Person Having Ordinary Skill in the Art
[B] General Rule: Ordinary and Customary Meaning
[1] Decisions Permitting Only "Stringent" Exceptions to Ordinary Meaning
[2] Decisions Rejecting "Stringent" Exceptions Rule
[C] Self-Defined Terms ("Own Lexicographer" Rule)
[1] Express Redefinition
[2] Implicit Redefinition
[D] Interpret Claims in View of the Written Description but Do Not Import a Limitation from the Written Description into the Claims
[E] Generally Do Not Exclude Preferred Embodiment
[F] Claim Differentiation Principle
[1] Definition
[2] Weight of Presumption
[G] Generally Do Not Interpret Claims to Preserve Validity
[H] The Indefinite Article "A" Generally Means One or More
[I] Timing: Interpret Claim Term Meaning as of Effective Filing Date

§15.05 Disclaimer or Disavowal

[A] In the Specification
[B] During Prosecution in the USPTO
[1] Foundational Case
[2] Disavowal of Scope Must Be Clear and Unmistakable
[3] Disclaimer by Statements in USPTO Post-Issuance Reviews

§15.06 Interpreting Preamble Language

[A] Preamble Not Scope-Limiting
[B] Preamble Is Scope-Limiting

§15.07 Federal Circuit Review of Claim Interpretation Decisions

[A] Question of Law, Fact, or Mixed
[B] De Novo Review Under Cybor ( en banc) (1998)
[C] Criticism of De Novo Standard of Review
[D] Federal Circuit Revisits Cybor in Lighting Ballast (2014)
[E] Deference for Fact Finding: Teva (U.S. 2015)
[F] Federal Circuit's Application of Teva
[1] Limited Impact to Date
[2] Federal Circuit Must Not Consider Extrinsic Evidence in First Instance
[G] Interlocutory Appeals Rejected

§15.08 Collateral Estoppel Effect of Prior Claim Interpretation Decisions

[A] Generally
[1] Elements
[2] Relevant Supreme Court Decisions
[B] Does Earlier Decision by Federal District Court

To continue reading

Request your trial

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT