What does this patent claim mean?
What does it mean to you?
A few years ago, every patent attorney was on pins and needles awaiting the decision from the Court of Appeals for the Federal Circuit (“CAFC”) in AWH v. Phillips describing the method courts should use to determine the scope of a claim of a patent. Controversy had been dividing the judges of the CAFC, blogs blossomed discussing the issue, water cooler arguments were frequent, more paper was consumed by amicus briefs than all the stimulus bills, attorneys argued for the proper balance of intrinsic and extrinsic evidence, patent attorneys with engineering degrees happily drew complex flow charts describing claim construction, those were days.
Four years later, we all know how to properly construe a claim according to the CAFC. We don’t talk about it anymore; patentable subject matter, obviousness, licensing, and the authority of the USPTO occupy our time and energy.
We were taught to understand (or construe) a claim, initially -
Intrinsic evidence is used:
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The language of the claims themselves is construed directly; and
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This construction may be modified based upon:
- The description of the invention and the definition of claim terms in the specification; and statements and arguments in the prosecution history of the patent.
Then, if necessary, extrinsic evidence may be used:
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Unbiased extrinsic evidence such as dictionaries; and
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Potentially biased extrinsic evidence such as expert testimony may be used last to complete our understanding.
Of course, this method still allows for significant creativity, argument and other fun in construing the claims for litigation and opinion work.
One significant part of the analysis is often overlooked. Though claim construction is a matter of law, the goal of claims construction is to determine the meaning of a claim as understood by a person of ordinary skill in the art at the time of filing.
This cannot be emphasized enough; claims are to be interpreted as understood by one skilled in the art. Too often, I encounter inventors or patent owners that do not focus on an understanding of the claims – they leave it to their attorneys. Attorneys all too often accept this responsibility. A proper claim construction determines the value and the validity of a patent. Though understanding a claim can be difficult, patent holders and attorneys should carefully review all the claims together to confirm that come to a proper understanding of how the claims may be understood by one skilled in the art. It is important that clients and attorneys have a meeting of the minds over claim meanings or the claims should be amended.
