Patent Claim Construction
Patent claim construction is a process during patent litigation to determine whether patent infringement has occurred. To prove infringement, each patent claim will be evaluated to decide whether they’ve been violated. Regardless of how similar two products, processes or other patentable items may seem, a finding of infringement is unlikely if the written claims haven’t been violated.
Patent Claim Construction Rules
Creating definitions for words is the driving portion of claim construction. Courts have the task of construing a patent’s claims, giving them meaning and then comparing them to prior art or allegedly infringing items. This is why patent claim construction rules are so important. While there’s no step-by-step process to creating the perfect claim – due mostly to the infinite variety of inventions out there – knowing the rules that dictate patent claim construction can give you an advantage in protecting your invention. The rules consist of the following:
This patent claim construction rules are typically beneficial to the inventor themselves. It dictates that the words within a claim be interpreted in the way the patent owner is believed to have intended them. The reading of the claims should be sympathetic to the expressed or implicit purpose of the inventor.
Focus on Contextual Clues
While each claim within a patent registration is important, it’s necessary that claim construction consider the patent as a whole. The claims should be construed in a way that takes the entire context of the patent into consideration.
One of the most important patent claim construction rules relates to term definitions. Words used in a patent claim don’t necessarily carry their everyday meaning. If express definitions are provided for certain terms, it’s important to evaluate the claims with those descriptions in mind. If definitions aren’t provided, terms will carry the ordinary meaning they conveyed on the relevant date.
Patent claims must be considered with their relevant dates in mind. If the patent was applied for prior to October 1, 1989, the date of issuance is considered the relevant date. For patents applied for after that point, the application’s date of publication is the relevant date.
Essentialness of Claim Elements
Patent claim construction rules also require courts to consider the essential nature of specific claims. There are two questions that can reach this conclusion. First, an element is considered essential if omitting or modifying it would change how the invention works.
Secondly, an element is considered essential if the inventor intended the element to be essential. Its practical effect need not be considered.
Final Rules of Patent Claim Construction
When considering each of these patent claim construction rules, they must be evaluated from the point of view of a “skilled reader.” All these questions boil down to discovering a claim’s meaning when evaluated by the skilled reader on the relevant date. All claims should be independently construed when possible.
Patent Claim Construction and Markman Hearings
In most instances, patent claim construction takes place prior to patent litigation. This is so the meaning of disputed terminology can be decided prior to a judge or jury hearing evidence. These claim construction hearings – also commonly known as Markman Hearings – have been commonplace since the Supreme Court heard the case of Markman v. Westview Instruments, Inc. in 1996.
In the Markman case, the justices decided that patent terminology definitions should be decided by judges rather than juries as a matter of law. Their decision dictated that, while juries are best suited to determine the facts of a case, judges were more capable of deciding matters of law. Markman hearings can be held any time prior to jury selection, but 78 percent are held after discovery and prior to trial.
Claims can be construed broadly or narrowly, and dependent on your particular situation, an approach may be beneficial in one instance but not another. Consider the following:
- Construe Broadly: In situations involving patent infringement, intellectual property owners may benefit from a broader claim construction. This could help their claim encompass the defendant’s methods or products.
- Construe Narrowly: If the validity of a patent’s claim is at issue, the owner would likely benefit from a narrow construction. This can lessen the probability of prior art being encompassed in the claim. If this were to occur, the entire patent could be rendered invalid.
Regardless of how narrow or broad the judge handles claim construction, they will not decide whether a certain process or product constitutes patent infringement. This will be left to a jury. In many cases, though, a Markman Hearing may prevent a case from ever making it to trial. The claim construction findings can make it all but obvious who will emerge victorious in court. This often encourages a pre-trial settlement.
Claim construction hearings should be viewed as any other court proceeding. Proper preparation and building a strong case are essential for a positive outcome. If the judge’s claim construction decision goes your way, you’ll be better suited to win in a jury trial.
While there’s no way to guarantee a good outcome during a claim construction hearing, the following tips can improve your chances of victory.
Bring in the Experts
While it’s not essential that you use expert testimony when defending your patent, it can go a long way in proving your case. This is especially true if your claims include highly technical language. A judge may come to the wrong conclusion if they only consider the “plain meaning” of certain terminology. An expert in the relevant field can attest to words’ actual meanings, even if they’re not explicitly defined in a claim.
Focus on Intrinsic Evidence
Claim construction hearings allow the presentation of intrinsic and extrinsic evidence, but your goal should be to focus on the former as much as possible. Intrinsic evidence includes the documentation and file history of a patent. Related patents and any prosecution history also fall under this umbrella.
Extrinsic evidence refers to materials that are outside the realm of the patent and its history. Examples include dictionaries, inventor testimony and technical articles. Even the very useful area of expert testimony falls under the purview of extrinsic evidence.
All extrinsic evidence must be considered within the context of presented intrinsic evidence. It’s also typically only allowed when the court feels its inclusion would be helpful in educating itself on the relevant field of invention. This is why intrinsic evidence should be your main focus.
Limit the Number of Terms
Whether you’re focusing on the plain or technical meaning of relevant words, it’s important to limit the number of terms presented for debate. This ensures the judge isn’t overwhelmed with what could be complex information outside of their field of expertise. You should only focus on the terms necessary to prove your case. Additionally, using graphics to make your point can help the judge better understand the essential information.
Reach Agreements with Opposing Counsel
Whenever possible, you should reach agreements on disputed terms with the opposing counsel prior to a hearing. Pointing this out to the judge can earn goodwill later down the road. When you cannot come to an agreement, make sure you have a solid reason to provide the judge. Ensure your reasoning focuses on intrinsic evidence.
Don’t Be Transparent About Rationale
During a claim construction hearing, you will want claims construed either broadly or narrowly based on whether the focus is infringement or validity. Even with this being the case, this should not be made obvious to the judge. The judge wants your reasoning to be based on the intrinsic evidence rather than your desired situational outcome. This can focus on a certain rationale, but you should never appear to “cherry pick” the law for a specific outcome.
Claim Construction Brief
A patent’s file history, related patents and expert testimony are just a few of the evidentiary items that can be used to sway a judge’s decision. It’s the claim construction brief, however, that will have the biggest effect. This is because the brief is where you’ll assert your entire case. Many of these documents are straightforward in nature and simply assert governing case law and the constructions being proposed.
Every claim construction brief should have at least three sections. The first section – the introduction – will explain the issue at hand and give a general description of why the case is before the court. This can include perceived motivations of the opposing party. A second section should include general principles of claim construction and how they apply to the case at hand. This should include prior case law.
A third section should list the terms that are in dispute. This is where you’ll make the case that your claim construction is how the court should construe the claims. Here we explain why the intrinsic evidence supports your interpretation of the terms in dispute, and most claim construction briefs will also include information on why the opposing party’s interpretation is inaccurate.
While it’s important to stay on point in this brief, you should also create a narrative that supports your case. This should include using claim terms in a manner that remains consistent with your own interpretation and inconsistent with the opposing party’s. This presents your terminology in such a way that the judge may feel your constructions are accurate simply by reading the claim construction brief.
Patent Cease and Desist Letter
Due to clarity often provided by Markman Hearings, many cases settle long before trial. It’s the patent cease and desist letter, though, that keeps most of these issues outside of the courtroom.
Over 97 percent of legal disputes never enter the court system, and cease and desist letters are partially responsible for this statistic. If you realize someone is infringing upon your patent, sending a cease and desist letter will alert them of their infringing behavior and demand that it ends.
By sending a patent cease and desist letter, you’re notifying an infringer that you will defend your intellectual property rights. Cases of accidental infringement are common, so these notices often end further violations. In instances of willful infringement, you’ll have created an evidentiary trail which can prevent an infringer from claiming they were unaware their actions were wrongful.
If you can avoid a Markman Hearing with the help of a patent cease and desist letter, you’ll undoubtedly save time and money.
If you have a patent infringement issue and are concerned about patent claim construction, please contact us for a free consultation.