Chapter 15 Outline

• Jurisdiction: United 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

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