Claim Construction

AuthorKenneth Dorsney
Pages253-278
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).
dor54588_12_ch12_253-278.indd 253 5/5/16 5:46 PM
CHAPTER 12
254
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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