Claim InterpretationClaim InterpretationBy:By:

Michael A. Leonard IIMichael A. Leonard II

andand

Jared T. OlsonJared T. Olson

OverviewOverview

Claim interpretation is the process of Claim interpretation is the process of assigning meaning to claim termsassigning meaning to claim terms

Different standards for claim interpretation Different standards for claim interpretation are used during patent prosecution and are used during patent prosecution and patent litigationpatent litigation

Patent Prosecution StandardPatent Prosecution Standard

During patent examination, claims During patent examination, claims must be given:must be given:1.1. Their broadest reasonable Their broadest reasonable

interpretation;interpretation;2.2. In light of the specification;In light of the specification;3.3. As it (the specification) would be As it (the specification) would be

understood by one of ordinary skill understood by one of ordinary skill in the artin the art

(See MPEP § 2111)(See MPEP § 2111)

Claim Limitations Claim Limitations notnot Imported from Imported from SpecificationSpecification

Limitations discussed in the specification Limitations discussed in the specification but not recited in the claims are not but not recited in the claims are not imported into the claim during patent imported into the claim during patent prosecutionprosecutionFor instance, a particular embodiment in For instance, a particular embodiment in the specification may not be imported into the specification may not be imported into the claim when the claim language is the claim when the claim language is broaderbroader than the embodiment than the embodiment(See MPEP § 2111.01(II))(See MPEP § 2111.01(II))

Plain MeaningPlain Meaning

The words of a claim must be given their “plain meaning” unless the The words of a claim must be given their “plain meaning” unless the plain meaning is inconsistent with the specificationplain meaning is inconsistent with the specificationThe plain meaning is the ordinary and customary meaning that The plain meaning is the ordinary and customary meaning that would be given to the term by one of ordinary skill in the art, if such would be given to the term by one of ordinary skill in the art, if such a meaning existsa meaning existsThe ordinary and customary meaning of a term may be evidenced The ordinary and customary meaning of a term may be evidenced by a variety of sources, including “the words of the claims by a variety of sources, including “the words of the claims themselves, the remainder of the specification, the prosecution themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art” principles, the meaning of technical terms, and the state of the art” (Phillips v. AWH Corp(Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005))., 415 F.3d 1303, 1314 (Fed. Cir. 2005))““Intrinsic” evidence arises from the application and prosecution Intrinsic” evidence arises from the application and prosecution history while “extrinsic” evidence is from external sourceshistory while “extrinsic” evidence is from external sourcesIf extrinsic sources evidence more than one definition for a term, the If extrinsic sources evidence more than one definition for a term, the intrinsic record must be consulted to choose the best meaningintrinsic record must be consulted to choose the best meaning(See MPEP § 2111.01(I) and 2111.01(III))(See MPEP § 2111.01(I) and 2111.01(III))

Applicant may be His or Her Own Applicant may be His or Her Own LexicographerLexicographer

While claim terms are normally given their ordinary and While claim terms are normally given their ordinary and customary (or plain) meaning, an Applicant may define a customary (or plain) meaning, an Applicant may define a claim term in the specificationclaim term in the specificationWhen terms are defined in this manner, the Applicant is When terms are defined in this manner, the Applicant is said to be acting as his or her own lexicographersaid to be acting as his or her own lexicographerA definition provided by the Applicant overrides the plain A definition provided by the Applicant overrides the plain meaning of a termmeaning of a termWhere a term is defined, the Applicant must define the Where a term is defined, the Applicant must define the term with “reasonable clarity, deliberateness and term with “reasonable clarity, deliberateness and precision” and the uncommon definition must be set out in precision” and the uncommon definition must be set out in a manner in the disclosure so that a person of ordinary a manner in the disclosure so that a person of ordinary skill in the art would have notice of the change in meaning skill in the art would have notice of the change in meaning (see (see In re PaulsenIn re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994)), 30 F.3d 1475, 1480 (Fed. Cir. 1994))(See MPEP § 2111.01(IV))(See MPEP § 2111.01(IV))

Preambles may be Non-LimitingPreambles may be Non-Limiting

While the claim body will generally be held to be limiting, the preamble of a While the claim body will generally be held to be limiting, the preamble of a claim may not beclaim may not beThe determination of whether a preamble limits a claim is made on a case-The determination of whether a preamble limits a claim is made on a case-by-case basis in light of the facts in each case, and there is no “litmus test” by-case basis in light of the facts in each case, and there is no “litmus test” defining when the preamble limits the scope of the claimdefining when the preamble limits the scope of the claim““If the claim preamble, when read in the context of the entire claim, recites If the claim preamble, when read in the context of the entire claim, recites limitations of the claim, or, if the preamble is ‘necessary to give life, limitations of the claim, or, if the preamble is ‘necessary to give life, meaning, and vitality’ to the claim, then the claim preamble should be meaning, and vitality’ to the claim, then the claim preamble should be construed as if in the balance of the claim” (construed as if in the balance of the claim” (Pitney Bowes, Inc. v. Hewlett-Pitney Bowes, Inc. v. Hewlett-Packard Co.Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999), 182 F.3d 1298, 1305 (Fed. Cir. 1999)However, any terminology in the preamble that limits the structure of the However, any terminology in the preamble that limits the structure of the claimed invention must be treated as a claim limitationclaimed invention must be treated as a claim limitationA preamble that only recites the purpose or intended use of the claimed A preamble that only recites the purpose or intended use of the claimed invention is not considered to be a limitationinvention is not considered to be a limitationIn practice, rather than worrying about whether a preamble is or is not In practice, rather than worrying about whether a preamble is or is not limiting, Examiners often treat the preamble as limiting and reject the limiting, Examiners often treat the preamble as limiting and reject the features thereof based on art, even for functional recitationsfeatures thereof based on art, even for functional recitations(See MPEP § 2111.02, 2111.02(I) and 2111.02(II))(See MPEP § 2111.02, 2111.02(I) and 2111.02(II))

Transitional PhrasesTransitional Phrases

The transitional phrases “comprising,” “consisting of,” and The transitional phrases “comprising,” “consisting of,” and “consisting essentally of” define the scope of the claim with “consisting essentally of” define the scope of the claim with respect to what unrecited additional components or steps are respect to what unrecited additional components or steps are excluded from the scope of the claimexcluded from the scope of the claim““Comprising,” synonymous with “including,” “containing,” or Comprising,” synonymous with “including,” “containing,” or “characterized by,” is open-ended and does not exclude “characterized by,” is open-ended and does not exclude additional, unrecited elements or method steps; accordingly, additional, unrecited elements or method steps; accordingly, “comprising” is usually preferred“comprising” is usually preferred““Consisting of” excludes any element or step not specified in Consisting of” excludes any element or step not specified in the claimthe claim““Consisting essentially of” limits the scope of a claim to the Consisting essentially of” limits the scope of a claim to the specified materials or steps and those that do not materially specified materials or steps and those that do not materially affect the basic and novel characteristics of the claimed affect the basic and novel characteristics of the claimed invention (typically seen in compositions)invention (typically seen in compositions)(See MPEP § 2111.03)(See MPEP § 2111.03)

““Adapted to,” “Adapted for,” Adapted to,” “Adapted for,” “Wherein” and “Whereby” Clauses “Wherein” and “Whereby” Clauses

These clauses may raise a question as to These clauses may raise a question as to whether claim language following them is whether claim language following them is limitinglimitingSuch a determination depends on the Such a determination depends on the specific facts of the case and while not specific facts of the case and while not automatically non-limiting, Applicants may automatically non-limiting, Applicants may wish to consider using different language, wish to consider using different language, such as “configured to”such as “configured to”(See MPEP § 2111.04)(See MPEP § 2111.04)

Patent Litigation StandardPatent Litigation Standard

Claims of issued patents are interpreted in Claims of issued patents are interpreted in light of the specification, prosecution light of the specification, prosecution history, prior art and other claimshistory, prior art and other claimsBoth extrinsic evidence and intrinsic Both extrinsic evidence and intrinsic evidence may be consideredevidence may be consideredLarge patent infringement cases often turn Large patent infringement cases often turn on the meaning of a single word in a claimon the meaning of a single word in a claim

Phillips v. AWH Corp.Phillips v. AWH Corp.

Phillips v. AWH CorpPhillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. ., 415 F.3d 1303, 1314 (Fed. Cir. 2005) provided a comprehensive discussion regarding 2005) provided a comprehensive discussion regarding claim constructionclaim constructionPhillipsPhillips reiterated that claims are to be given their reiterated that claims are to be given their ordinary and customary meaning, which is the meaning ordinary and customary meaning, which is the meaning the term would have to a person of ordinary skill in the the term would have to a person of ordinary skill in the art at the time the invention was madeart at the time the invention was madeThe person of ordinary skill in the art is deemed to read The person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular the claim term not only in the context of the particular claim in which the term appears, but in the context of the claim in which the term appears, but in the context of the entire patent, including the specificationentire patent, including the specification

Not all Claim Terms have Special Not all Claim Terms have Special Meaning in the ArtMeaning in the Art

In some cases, the ordinary meaning of a In some cases, the ordinary meaning of a term is apparent even to laypeople since term is apparent even to laypeople since the term requires little more than the the term requires little more than the application of a widely accepted meaning application of a widely accepted meaning of commonly understood wordsof commonly understood wordsGeneral purpose dictionaries may be General purpose dictionaries may be helpful to provide the definition in such helpful to provide the definition in such casescases

Terms not Having Readily Apparent Terms not Having Readily Apparent MeaningMeaning

Where the meaning of a claim term is not Where the meaning of a claim term is not readily apparent, however, a court may readily apparent, however, a court may consult a variety of sources:consult a variety of sources:1.1. Intrinsic evidence (claim language, Intrinsic evidence (claim language,

specification, prosecution history); andspecification, prosecution history); and2.2. Extrinsic evidence (relevant scientific Extrinsic evidence (relevant scientific

principles, meaning of technical terms, principles, meaning of technical terms, and state of the art)and state of the art)

Claim LanguageClaim Language

Claim language may inform the meaning of a Claim language may inform the meaning of a claim term through one or more of the following:claim term through one or more of the following:

1.1. The context of the claim in which the term The context of the claim in which the term appears;appears;

2.2. The usage in other claims having the same The usage in other claims having the same term; andterm; and

3.3. The doctrine of claim differentiation, which The doctrine of claim differentiation, which looks at the relative scope of each claim in looks at the relative scope of each claim in relation to othersrelation to others

The SpecificationThe Specification

The specification is considered by the CAFC to The specification is considered by the CAFC to be the single best guide to claim meaning by the be the single best guide to claim meaning by the CAFC because its job is to describe the claimed CAFC because its job is to describe the claimed invention in full, clear, concise and exact termsinvention in full, clear, concise and exact terms

Further, the specification may indicate that an Further, the specification may indicate that an Applicant was acting as his or her own Applicant was acting as his or her own lexicographerlexicographer

Thus, it is appropriate for a reviewing court to Thus, it is appropriate for a reviewing court to rely heavily on the specification to determine rely heavily on the specification to determine claim meaningclaim meaning

Prosecution HistoryProsecution History

The prosecution history should also be The prosecution history should also be consultedconsultedHowever, the prosecution history is considered However, the prosecution history is considered to be less useful than the specification since it to be less useful than the specification since it represents an ongoing negotiation between the represents an ongoing negotiation between the patentee and the USPTO and tends to lack the patentee and the USPTO and tends to lack the clarity of the specificationclarity of the specificationNonetheless, the prosecution history may show Nonetheless, the prosecution history may show how the inventor understood the invention and how the inventor understood the invention and whether the scope of the invention was limited in whether the scope of the invention was limited in order to obtain an allowanceorder to obtain an allowance

Extrinsic Evidence is Less Extrinsic Evidence is Less SignificantSignificant

Extrinsic evidence is less significant than intrinsic evidence with Extrinsic evidence is less significant than intrinsic evidence with respect to claim constructionrespect to claim constructionSome of the reasons extrinsic evidence is considered less reliable Some of the reasons extrinsic evidence is considered less reliable include:include:

It is not part of the patent and, unlike the application, was not created at It is not part of the patent and, unlike the application, was not created at the time of patent prosecution for explaining the patent’s scope and the time of patent prosecution for explaining the patent’s scope and meaning;meaning;

It may not truly reflect the understanding of those skilled in the art;It may not truly reflect the understanding of those skilled in the art; It may suffer from litigation-based bias;It may suffer from litigation-based bias; It is prone to selective use for advocacy purposes; andIt is prone to selective use for advocacy purposes; and If unduly relied upon, it may change the meaning that is otherwise If unduly relied upon, it may change the meaning that is otherwise

indicated by the intrinsic evidenceindicated by the intrinsic evidenceNonetheless, extrinsic evidence may be helpful in claim construction Nonetheless, extrinsic evidence may be helpful in claim construction where it is not at odds with intrinsic evidencewhere it is not at odds with intrinsic evidence

MarkmanMarkman Hearings Hearings

A A MarkmanMarkman hearing is a pretrial hearing in the hearing is a pretrial hearing in the U.S. Federal District Court where a judge U.S. Federal District Court where a judge examines evidence from the parties regarding examines evidence from the parties regarding the purported meaning of claim termsthe purported meaning of claim termsThese hearings are named after the Supreme These hearings are named after the Supreme Court case Court case Markman v. Westview Instruments, Markman v. Westview Instruments, Inc.Inc., 517 U.S. 370 (1996), 517 U.S. 370 (1996)A A MarkmanMarkman hearing may consider both intrinsic hearing may consider both intrinsic and extrinsic evidence, but must adhere to the and extrinsic evidence, but must adhere to the principles enunciated in principles enunciated in PhillipsPhillips, as discussed , as discussed aboveabove

ConclusionConclusion

Patent prosecution and patent litigation Patent prosecution and patent litigation use different standards with respect to use different standards with respect to claim interpretationclaim interpretationIt is helpful to be aware of both standards It is helpful to be aware of both standards when drafting and prosecuting patent when drafting and prosecuting patent applications to understand the position applications to understand the position that the Examiner should take, as well as that the Examiner should take, as well as to try to give claim terms the best meaning to try to give claim terms the best meaning possible for potential future litigationpossible for potential future litigation