Patent claim interpretation methodologies and their claim scope paradigms.

AuthorCotropia, Christopher A.

ABSTRACT

The optimal scope of patent protection is an issue with which patent system observers have struggled for decades. Various patent doctrines have been recognized as tools for creating specific patent scopes and, as a result, implementing specific patent theories. One area of patent law that has not been addressed in the discussion on patent scope and theories is patent claim interpretation. This omission is particularly noteworthy because of the substantive role patent claims and the interpretation thereof play in the patent system, namely the framing of questions of patent infringement and validity.

This Article will explore the not-yet-discussed relationship between claim interpretation methodology and patent scope. The discussion will focus on how changes in interpretation methodology affect patent scope, an aspect of methodologies that the Article identifies as their "claim scope paradigm." Introducing the claim scope paradigm concept is mainly beneficial for two reasons. First, identifying the claim scope paradigm allows different interpretation methodologies to be evaluated as to their impact on the substantive function of patent claims. A claim scope paradigm criterion represents a significant and worthwhile departure from the current standard of certainty used by courts and commentators. Second, recognizing claim scope paradigms facilitates the use of claim interpretation methodology as a patent policy lever. Interpretation methodologies can be highly effective levers, having the ability to inject patent policy at the most basic level of the patent process.

INTRODUCTION I. FUNCTIONS OF PATENT CLAIMS A. Public Notice Function B. Patent Scope Defining Function II. PATENT CLAIM INTERPRETATION METHODOLOGIES A. Claim Interpretation Basics 1. Interpretative Sources 2. Canons of Interpretation B. Common Variation Among Methodologies: The Degree of Influence of the Specification 1. Patent Specification 2. Use of the Specification in Claim Interpretation C. Majority and Dissent in the Phillips v. AWH Corporation Panel Decision: An Example of Two Different Claim Interpretation Methodologies 1. The Majority's Methodology's Full and Early Use of the Specification 2. The Dissent's Methodology's Heavy Presumption in Favor of Dictionaries D. En Banc Decision in Phillips v. AWH Corporation: The Federal Circuit Selects a Claim Interpretation Methodology III. EVALUATING CLAIM INTERPRETATION METHODOLOGIES A. Need for Evaluation Criteria B. Certainty as an Evaluation Criterion C. Shortcomings of Certainty as a Criterion IV. A NEW EVALUATION CRITERION: A METHODOLOGY'S CLAIM SCOPE PARADIGM A. Identification of an Interpretation Methodology's Claim Scope Paradigm 1. Claim Scope Paradigm of the Specification Methodology 2. Claim Scope Paradigm of the Heavy Presumption Methodology B. Evaluating Claim Interpretation Methodologies Based on Their Claim Scope Paradigm 1. Competitive Innovation Theory Supports the Selection of the Specification Methodology 2. Prospect Theory (Possibly) Supports the Selection of the Heavy Presumption Methodology C. Benefits to Using Claim Scope Paradigm as a Criterion 1. Claim Scope Paradigm Addresses a Methodology's Effect on the Substantive Function of Patent Claims 2. Recognizing that the Claim Scope Paradigm Facilitates Using Claim Interpretation Methodology as a Highly Effective Patent Policy Lever CONCLUSION INTRODUCTION

The optimal scope of patent protection is an issue with which patent system observers have struggled for decades. (1) With any invention, considerations turn to what aspects of the invention deserve to be protected and are therefore patentable. (2) Questions also arise regarding what products and processes the inventor should be able to control with her patent. (3) Both of these areas of concern fall under the broader question of appropriate patent scope. Patent scope defines the inventor's power over the markets related to the patented invention. (4) Different patent theories suggest different scopes of protection to either create incentives for the inventor to invent (5) or to facilitate the invention's commercialization and improvement. (6) Various patent doctrines have been recognized as tools for creating specific patent scopes and, as a result, implementing specific patent theories. (7)

One area of patent law unaddressed in the discussion on patent scope and theories is patent claim interpretation. Patent claims are single sentences found at the end of the patent document. (8) They are statutorily charged with the task of defining the patented invention. (9) In a vacuum, claim terms are of little use. They must be interpreted and given meaning so they can be used in a given context.

The current focus regarding claim interpretation is on which interpretation method should be used. (10) The question of proper interpretation methodology has been at the forefront since the Supreme Court held in Markman v. Westview Instruments, Inc. that claim interpretation, also known as claim construction, is a matter exclusively for the courts. (11) Since this decision, the Federal Circuit, the court with exclusive appellate jurisdiction over patent cases, (12) has consistently spoken on the methodology question. The discussions on proper interpretation methodology developed problematically into two distinct methodologies. (13) Recognizing this fact, the Federal Circuit recently issued an en banc opinion in Phillips v. AWH Corp. (Phillips III) choosing one of these methodologies. (14)

Heretofore, courts and commentators have not viewed this choice between methodologies as a question involving patent scope. To the contrary, claim interpretation methodology has been seen as only effectuating the public notice function of patent claims. (15) That is, claims are interpreted only to inform patent observers about the patented invention, but nothing more. To meet this goal, methodologies that produce certain, reproducible, and definitional results should be adopted. Claim interpretation methodologies are thus evaluated under a certainty criterion.

The Federal Circuit's en banc order in Phillips v. AWH Corp. (Phillips II) makes certainty the only evaluation criterion, asking which methodology "better serve[s]" the "public notice function of patent claims." (16) The Federal Circuit's en banc opinion in Phillips III continues to recognize certainty as a goal. (17) This narrow focus on certainty has overlooked claim interpretation methodology's impact on the other, more important, function of patent claims--substantively defining patent scope. A choice among interpretation methodologies is also a choice among possible patent scopes. Different approaches to claim interpretation result in different claim definitions, which in turn create different patent scopes because the defined claim establishes the protection afforded the inventor.

For example, consider the Federal Circuit's recent decision in Microsoft Corp. v. Multi-Tech Systems, Inc. (18) In Microsoft, Multi-Tech charged Microsoft with infringing its patents covering the simultaneous transmission of voice and computer data. (19) The dispute came down to whether Multi-Tech's patents covered Microsoft's transmission of voice and data through a packet-switched network, such as the Internet, or if the patent covered only simultaneous transmission through direct point-to-point telephone line connections. (20) The Federal Circuit framed this question as one of patent claim interpretation, asking whether the patents' claim terms "sending," "transmitting," and "receiving" were limited to communication over a direct telephone connection. (21) If so, Microsoft's technology did not fall within the claims' scope of exclusivity and therefore did not infringe. (22)

The court's panel could not agree on a result. The source of their disagreement was the proper method of interpreting Multi-Tech's patent claims. The majority interpreted the claims by relying, for the most part, on the patents' specifications. (23) They focused on statements in the patents describing the invention as a "personal communications system [that] includes 'hardware to enable voice, fax and data communications with a remote site connected through a standard telephone line...."' (24) As a result of consulting the specification, the majority limited the claim terms at issue to communication over a telephone line and found that Microsoft did not infringe. In contrast, the dissent focused on the ordinary meaning of the terms "sending," "receiving," and "transmitting," and concluded that their plain meaning did not limit communication to a particular network. (25) The dissent, therefore, found that Multi-Tech's patents covered the disputed products.

Although framed as merely a question of proper interpretation methodology, the Microsoft decision is also about proper patent scope. By adopting the specification-centric methodology, the majority de facto concluded that Multi-Tech should not have exclusivity beyond the details of the invention described in its patent. The dissent, in contrast, employed a methodology that allowed Multi-Tech to enjoy a broader patent scope. The type of products Multi-Tech could exclude therefore depended on the chosen methodology. The linkage between methodology and patent scope exhibited in Microsoft holds true in most cases centered on claim interpretation.

This Article will explore the relationship between claim interpretation methodology and patent scope. Although the Federal Circuit's recent opinion in Phillips III has started this discussion, it has yet to be developed fully. (26) Interpretation methodologies differ in the informational sources they reference and the degrees of influence they afford each informational source during interpretation. These differences usually result in different meanings for the claim terms at issue. Core patent inquiries then use the defined claim to determine whether a product or process infringes the...

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