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

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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.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.