Claim Construction I

1
Claim Construction I

• Class Notes February 18, 2003
• Law 677 Patent Law Spring 2003
• Professor Wagner

2
Todays Agenda

• Introduction to Claim Construction
• Who decides? Why?

3
Mapping the Course

• Introduction to Patents
• Requirements for Patent Validity
• Full disclosure
• Avoidance of Statutory Bars
• Novelty (no anticipation)
• Nonobviousness
• Appropriate subject matter later
• The Rules for Patent Enforcement
• Claim Construction
• Infringement the Doctrine of Equivalents
• Defenses Counterclaims
• Claim Construction Crucial for All

4
The Centrality of Claim Construction
The Name of the Game is the Claims (Judge Rich,
1990)
5
What Does Claim Construction Look Like?

• The Claim at Issue in Markman v Westview Inst.
• 1. The inventory control and reporting system,
  comprising
• a data input device for manual operation by an
  attendant, . . .
• a data processor including memory operable to
  record said information and means to maintain an
  inventory total, . . .
• a dot matrix printer operable under control of
  the data processor to generate a written record
  of the indicia associated with sequential
  transactions, . . . and,
• at least one optical scanner connected to the
  data processor and operable to detect said bar
  codes on all articles passing a predetermined
  station,
• whereby said system can detect and localize
  spurious additions to inventory as well as
  spurious deletions therefrom.

6
What Does Claim Construction Look Like?

• The Claim at Issue in Markman v Westview Inst.
• 1. The inventory control and reporting system,
  comprising
• The Westview system tracks receivables rather
  than clothing
• A jury found infringement, but the District Court
  entered JMOL, determining that inventory
  encompassed both receivables and articles of
  clothing.
• Why does this not infringe?
• What types of information would be useful?
• Is either the judge or jury better suited to the
  task?

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Who Does Claim Construction?

• Markman v Westview Instruments (1996)
• Note the Courts description a mongrel
  practice
• Traditional analysis of judge/jury issues
• Is there a 7th Amendment guarantee of a jury
  trial?
• Does precedent command the allocation of
  responsibility?
• Are there functional reasons to allocate
  responsibility?
• Consider the Courts functional analysis
• Judges are more skilled at construing written
  documents
• Uniformity will be better served by the treatment
  of claim construction as an issue for the judge.
• How will this work? Do you agree?
• What does this imply about the Federal Circuit?

8
Claim Construction Issues

• The timing of claim construction
• Interlocutory appeals
• Appellate review
• Did Markman really decide the who decides
  question? (What question lingered?)
• Cybor v FAS Technologies (1998)
• How does Cybor effect the functional
  considerations of Markman? (Is Cybor faithful to
  Markman?)

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• Next Class
• Claim Construction II
• The Process of Claim Construction