Claim Construction

• Author: Kenneth L. Dorsney
• Pages: 253-278

253

chapter 12

Claim Construction

I. General Aspects of Claim Construction

Claim construction is the process in which courts interpret the meaning

and scope of a patent’s claims. Since the claims “define the invention to

which the patentee is entitled the right to exclude,”1 construing the claims

can be a critical step in determining the outcome of almost all patent liti-

gations. In fact, the first step of any infringement or validity analysis is

to determine the meaning of the claims (i.e., what the claims encompass

and what they do not).2 Only after the boundaries of the claims have been

determined can a judge or jury decide whether the allegedly infringing

product or process falls within the scope of the patentee’s claims, whether

the claims are adequately described in the specification, or whether the

claims are invalid in view of the prior art. From a practical standpoint,

once the scope of the patentee’s rights has been determined, the question

of infringement can often be resolved without trial, often by agreement of

the parties or on summary judgment.

This chapter begins by setting forth the general principles of the claim

construction analysis. Once the basic rules for interpreting the meaning

of the claims have been explained, this chapter addresses the timing and

procedural aspects of the claim construction analysis. Finally, this chapter

closes with a discussion of various strategic considerations the parties to

an Abbreviated New Drug Application (ANDA) case should address once

the claims have been construed.

Mark J. Feldstein, Ph.D., and Krista E. Bianco, Finnegan, Henderson, Farabow, Garrett &

Dunner LLP.

1. Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115

(Fed. Cir. 2004).

2. Abbott Labs. v. Andrx Pharms., Inc., 452 F.3d 1331, 1335–36 (Fed. Cir. 2006); Merck

& Co. v. Teva Pharms. USA, Inc., 347 F.3d 1367, 1369 (Fed. Cir. 2003); Union Oil Co. of Cal.

v. Atl. Richfield Co., 208 F.3d 989, 995 (Fed. Cir. 2000).

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CHAPTER 12

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A. Claim Construction Principles

1. Terms Construed as a Matter of Law

The Supreme Court’s decision in Markman v. Westview Instruments, Inc.

established that claim construction is determined as a matter of law.3

The Markman Court, after reviewing both historical common law prac-

tice and the relative interpretative skills of judges and juries, held that

the Seventh Amendment to the Constitution4 does not require that a jury

interpret patent claims.5 Thus, “the construction of a patent, including

terms of art within its claim, is exclusively within the province of the

court.”6 Since claim construction is a matter of law, it is reviewed de novo

on appeal.7 Because of this seminal case, claim construction hearings are

often referred to as Markman hearings, and claim construction briefing is

commonly referred to as Markman briefing.

The Supreme Court reaffirmed in January 2015 that claim construc-

tion is a matter of law but clarified that factual findings related to claim

construction should be reviewed for clear error.8 Finding that its previous

Markman opinion neither created nor argued for an exception of Federal

Rule of Civil Procedure 52(a)(6), which sets forth the ordinary rule govern-

ing appellate review of factual matters, the Court held that subsidiary fac-

tual findings related to claim construction are reviewed under the “clearly

erroneous” standard. Specifically, if a district court “reviews only evidence

intrinsic to the patent (the patent claims and specification, along with

the patent’s prosecution history), the judge’s determination will amount

solely to a determination of law, and the Court of Appeals will review that

construction de novo.”9 If in some cases, however, a district court resolves

factual disputes concerning information extrinsic to the patent, such as

disputes between experts regarding the meaning of the claim term in the

context of the specific patent claim under review, the court of appeals

must find that the judge “has made a clear error” in order to overturn

those factual findings.10 Moreover, even where the district court has made

3. 517 U.S. 370, 372 (1996).

4. The Seventh Amendment states that “[i]n suits at common law, where the value in

controversy shall exceed twenty dollars, the right of trial by jury shall be preserved.” U.S.

CONST.

amend. VII.

5. Markman, 517 U.S. at 376–91.

6. Id. at 372.

7. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454–56 (Fed. Cir. 1998) (en banc).

8. Teva Pharms. USA, Inc. v. Sandoz, Inc., 574 U.S. __, 135 S. Ct. 831, 837 (2015).

9. Id. at 841. The patent claims, specification, and prosecution history are referred to

as “intrinsic evidence.” See section I.A.2.a infra.

10. Teva Pharms., 135 S. Ct. at 841. See section I.A.2.b infra for a detailed discussion of

“extrinsic evidence.”

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