Claim Construction
Author | Kenneth Dorsney |
Pages | 181-204 |
181
chapter 9
Claim Construction1
I. General Aspects of Claim Construction
“Claim construction” is the process by 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,”2 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).3 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.
1. Mark J. Feldstein, Ph.D., & Jennifer A. Johnson, Ph.D., Finnegan, Henderson,
Farabow, Garrett & Dunner, LLP. The authors thank Brenda L. Danek, Ph.D., of Finnegan,
Henderson, Farabow, Garrett & Dunner, LLP for her assistance with this chapter.
2. Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115
(Fed. Cir. 2004).
3. Abbott Labs. v. Andrx Pharm., Inc., 452 F.3d 1331, 1335–36 (Fed. Cir. 2006); Merck
& Co., Inc. v. Teva Pharm. 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).
CHAPTER 9
182
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.4
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 Constitution5 does not require that a jury
interpret patent claims.6 Thus, “the construction of a patent, including
terms of art within its claim, is exclusively within the province of the
court.”7 Since claim construction is a matter of law, it is reviewed de novo
on appeal.8 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.
2. Determining Ordinary Meaning
A court properly construes the claims by giving them their ordinary and
customary meaning to a person of skill in the art as of the effective filing
date of the patent application.9 The claim construction analysis is con-
ducted through the eyes of one of skilled in the art because this person “is
deemed to read the words used in the patent documents with an under-
standing of their meaning in the field, and to have knowledge of any spe-
cial meaning and usage in the field.”10 Whereas the claims are presumed
to have their ordinary and customary meaning in the art, a patentee is
free to be his own lexicographer by assigning a word a different meaning
in the specification.11
Courts may consider different types of evidence when construing the
claims. In particular, “the court looks to ‘those sources available to the
public that show what a person of skill in the art would have understood
[the] disputed claim language to mean.’ Those sources include ‘the words of
the claims themselves, the remainder of the specification, the prosecution
history, and extrinsic evidence concerning relevant scientific principles,
4. 517 U.S. 370, 372 (1996).
5. 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.
6. Markman, 517 U.S. at 376–91.
7
. Id. at 372.
8. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454–56 (Fed. Cir. 1998) (en banc).
9. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc).
10. Id. (quoting Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed.
Cir. 1988)).
11. Id.
To continue reading
Request your trial