PATENT CLAIM CONSTRUCTION STRATEGIES FOR DEFENDANTS m Vandenberg.… · PATENT CLAIM CONSTRUCTION...

PATENT CLAIM CONSTRUCTION STRATEGIES FOR DEFENDANTS

July 16, 2008

Adam R. Wichman and John D. Vandenberg Klarquist Sparkman, LLP

One World Trade Center

121 SW Salmon Street, Suite 1600 Portland, OR 97204

[email protected]

One Union Square 600 University Drive, Suite 2950

Seattle, WA 98101 [email protected]

Law Seminar International Patent Claim Construction July 16, 2008 Seattle, WA

Law Seminars International | Patent Claim Construction | 07/16/08 in Seattle, WA

I. Scope A. Markman Strategies for Accused Infringers

B. What it Means to Define Claim Scope

C. Options for Wording a Claim Construction

D. Not How to Arrive at the Correct Construction

II. Takeaways A. Most Markman Proceedings Ignore Important Questions of Claim Scope

B. Wording: “Must Not”, “Need Not” and “May” as Important as “Must”

C. Advance Up to a Dozen Defenses at Markman

D. Win Case by “Losing” Markman

III. Summary A. Broader Scope of Markman

1. Not Just Issued Claims

2. Not Just Defining Words

3. Patentable Weight Should be Decided in Markman

B. Wording: “Must Not” as Important as “Must”

1. Traditional Approach: [claim term] Must [be/include/have] ….

2. Better:

a) [Claim term] Must [be/include/have] …., and

b) Need Not [be/include/have] …., and

c) [Claim term] Must Not [be/include/have] …., and

d) May [be/include/have] ….

C. Seek More from Markman

1. Dozen Defenses Might be Served by Markman Ruling

2. Not Just Exercise to Narrow for Non-infringement or Broaden for Prior Art Invalidity

3. For Example:

a) 112: Must Enable Full Scope of the Claim

b) 112: Claim Must Not Recite More Broadly Than Written Description’s “Invention”

c) “Date of Invention”: Push Later to Open Up Additional Prior Art

D. Win Case by Losing Markman

1. Silence is Friend of Patent Owner


2. Seek “Need Not” Construction Where “Need Not” or “Must” Advances Winnable Defense

3. Seek “May” Construction Where “May” or “Must Not” Advances Winnable Defense

4. {best to explain this strategy to client before the ruling!}

5. Don’t Overdo It

IV. Seek More from Markman A. Why Stop at the Issued Claims?: Consider seeking construction of

claims that were once pending in one or more applications leading to the patent, but did not issue. E.g., such a construction might bolster the materiality prong of an inequitable conduct defense. Their scope seems to be as much a question of law as the scope of an issued patent claim.

B. Address Patentable Weight Issues at Markman: Sometimes, particular claim language has no patentable weight. This may be true for language in a preamble or a whereby or thereby clause, or language constituting or analogous to “printed matter” (e.g., software code having insufficient relationship to a physical substrate). Consider seeking such a ruling as part of Markman proceedings.

1. Technical scope dispute is special case of the broadening claim analysis.

a) non-statutory and non-limiting claim terms may not distinguish over prior art

b) whether claim term is non-limiting is analytically prior to wording the claim construction because, e.g., it can render that exercise meaningless

2. Patentable weight is a foundational claim scope issue properly addressed at Markman.

a) Statutory basis in identifying the inventive “subject matter” required by 35 U.S.C. § 112, ¶ 2: “The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.”

b) Supreme Court’s opinion in Markman is itself broadly addressed to claim scope, not just resolving the meaning of individual claim terms.

(1) “We hold that the construction of a patent, including terms of art within its claim, is exclusively within the province of the court.” Markman v. Westview Instr., Inc., 517 U.S. 370, 372 (1996).

(2) “It has long been understood that a patent must describe the exact scope of an invention and its manufacturer to ‘secure to [the patentee] all to which he is entitled, [and] to apprise the


public of what is still open to them.’” Markman, 517 U.S. at 373, quoting McClain v. Ortmayer, 141 U.S. 419, 424 (1891).

(3) “As we noted in General Electric, ‘the limits of a patent must be known for the protection of the patentee, the encouragement of the inventive genius of others and the assurance that the subject matter will be dedicated ultimately to the public.’” Markman, 517 U.S. at 390.

(4) “The construction of written instruments is one of those things that judges often do and are likely to do better than jurors unburdened by training in exegesis. . . . [T]he claims of patents have become highly technical in many respects as the result of special doctrines relating to the proper form and scope of claims that have been developed by the courts and the Patent Office.” Markman, 517 U.S. at 388-89 (internal citation omitted).

c) Federal Circuit recognizes that “claim construction” includes both “disputed meaning” and “technical scope,” affecting both non-infringement and invalidity.

(1) “When the parties present a fundamental dispute regarding the scope of a claim term, it is the court's duty to resolve it.” O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., Ltd., 521 F.3d 1351, 1362 (Fed. Cir. 2008).

(2) In re Nuijten, 500 F.3d 1346, 1352-53 (Fed. Cir. 2007):

As in any other context in which the scope and meaning of the claims bears on the ultimate determination at hand, we must start by considering the issue of claim construction. See State St. Bank & Trust Co. v. Signature Fin. Group, 149 F.3d 1368, 1370 (Fed. Cir. 1998) (stating that “whether the ... patent is invalid for failure to claim statutory subject matter under § 101[ ] is a matter of both claim construction and statutory construction”).

(3) “Claim construction is a matter of resolution of disputed meanings and technical scope, to clarify and when necessary to explain what the patentee covered by the claims, for use in the determination of infringement. . . .” U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997).

3. Several iterations allow determination on patentable weight, many more than the relatively familiar non-limiting “preamble.”

a) Claim preamble non-limiting.

(1) Familiar principle / amorphous general rule:

Preamble language that merely states the purpose or intended use of an invention is generally not treated as limiting the scope of the claim. See Boehringer Ingelheim


Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003); Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997). However, we have stated that there is no “litmus test” for determining whether preamble language is limiting. Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). To the contrary, we have stated that “whether to treat a preamble as a claim limitation is determined on the facts of each case in light of the claim as a whole and the invention described in the patent.” Storage Tech. Corp. v. Cisco Sys., Inc., 329 F.3d 823, 831 (Fed. Cir. 2003).

Bicon, Inc. v. Straumann Co., 441 F.3d 945, 952 (Fed. Cir. 2006).

(2) More precise tests for patentable weight come from cases finding that the preamble is limiting. E.g., Bicon, 441 F.3d at 952 (collecting cases).

b) Statements of intended use in device claims may not distinguish prior art. (1) “It is well settled that the recitation of a new intended use for

an old product does not make a claim to that old product patentable. . . . Accordingly, Schreiber's contention that his structure will be used to dispense popcorn does not have patentable weight if the structure is already known, regardless of whether it has ever been used in any way in connection with popcorn.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (collecting cases)

c) Functional claim language in a device claim may not distinguish prior art. (1) Functional claim language in a device claim, not analyzed

within 35 U.S.C. § 112, ¶6 means-plus-function claiming, is ineffective to distinguish the prior art if it requires no corresponding structural limitation:

A patent applicant is free to recite features of an apparatus either structurally or functionally. See In re Swinehart, 439 F.2d 210, 212 (CCPA 1971) (“[T]here is nothing intrinsically wrong with [defining something by what it does rather than what it is] in drafting patent claims.”). Yet, choosing to define an element functionally, i.e., by what it does, carries with it a risk. As our predecessor court stated in Swinehart, 439 F.2d at 213:

[W]here the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter


may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on.

In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997).

(2) The applicant bears the burden of showing functionally-claimed features are not inherent in the prior art. In re Schreiber, 128 F.3d at 1478.

d) “Whereby” clauses in method claims are non-limiting.

A whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited. See Tex. Instr. Inc. v. U.S. Int'l Trade Comm'n, 988 F.2d 1165, 1172 (Fed. Cir. 1993).

e) Printed matter is non-limiting. (1) Printed matter is non-statutory and non-limiting over prior art.

Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability.

Although the printed matter must be considered, in that situation it may not be entitled to patentable weight.

In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983).

(2) Without a “functional relation to a substrate,” printed matter has no patentable weight.

Here, the printed matter in no way depends on the kit, and the kit does not depend on the printed matter. All that the printed matter does is teach a new use for an existing product. As the Gulack court pointed out, “[w]here the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability.” Id. If we were to adopt Ngai's position, anyone could continue patenting a product indefinitely provided that they add a new instruction sheet to the product. This was not envisioned by Gulack. Ngai is entitled to patent his invention of a new RNA extraction method, and the claims covering that invention were properly allowed. He is not, however, entitled to patent a known product by simply attaching a set of instructions to that product.

In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004).

f) Other non-statutory matter will not distinguish prior art.


(1) Federal Circuit explains that non-statutory matter in claims (for example, an “unpatentable mental process” under § 101) cannot be basis of secondary non-obviousness considerations.

[T]here is no pertinent evidence of secondary considerations because the only evidence offered is of long-felt need for the unpatentable mental process itself, not long-felt need for the combination of the mental process and a modern communication device or computer.

* * * The only evidence of long-felt need identified by the appellant was a declaration submitted by the inventor himself asserting that “there is a need for a mechanism to enable the creator of such a document to affirmatively choose a particular arbitration service provider that has the authority to settle any and all disputes related to that person's estate planning documents whenever such disputes arise, regardless of who is disputing what.” JA 193. At no point in his declaration does the inventor mention modern communication devices or computers.

In re Comiskey, 499 F.3d 1365, 1380 & n.17 (Fed. Cir. 2007).

(2) Non-statutory “transient signal” does not distinguish prior art. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007).

4. E.g., ask court in Markman to rule that certain portion of claim is non-statutory, or otherwise without patentable weight, and cannot be used to distinguish the prior art.

C. Consider Reconsideration of Markman Constructions: As they are, in part, an advance ruling on Jury Instructions, a court may be more willing to reconsider claim construction rulings than some other pre-trial rulings. E.g., when briefing Jury Instructions, instead of merely weakly objecting to adverse claim construction rulings to preserve your position on appeal, consider another strong attempt to get the construction you want (using, e.g., new case law, previously uncited dictionaries, a supplemental expert declaration, etc.). Of course, the construction might get worse!

D. Seek Equal Treatment: Construe Claims in Light of Invalidating Prior Art 1. Federal Circuit has said that trial courts should construe claims in

context of accused technology because claim construction is first step in an infringement analysis:

a) “… while a claim is not to be construed in light of the accused device, in an infringement case, it must inevitably be construed in context of the accused device.” Wilson Sporting Goods Co. v. Hillerich & Bradsby Co., 442 F.3d 1322, 1327 (Fed. Cir. 2006).


b) Lava Trading, Inc. v. Sonic Trading Mgm’t, LLC, 445 F.3d 1348, 1350 (Fed. Cir. 2006) (citations omitted):

In addition, this record on appeal does not supply any meaningful comparison of the accused products to the asserted claims. Without knowledge of the accused products, this court cannot assess the accuracy of the infringement judgment under review and lacks a proper context for an accurate claim construction. “While a trial court should certainly not prejudge the ultimate infringement analysis by construing claims with an aim to include or exclude an accused product or process, knowledge of that product or process provides meaningful context for the first step of the infringement analysis, claim construction.” Without the vital contextual knowledge of the accused products or processes, this appeal takes on the attributes of something akin to an advisory opinion on the scope of the ’982 patent.

2. This same logic applies to an anticipation defense. Claim construction is first step in the analysis. So, if strategically helpful, ask the Court to construe claims in context of uncited prior art. Indeed, person of ordinary skill in the art plainly would have read in the claims in light of closest art, and decided whether claims read on that art or not, and thus this context arguably is more important than that provided by the accused technology.

E. Couple With Other “Matter of Law” Claiming Issues

1. Regards as Invention:

a) “The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.” 35 U.S.C. § 112, ¶ 2. This is not part of Section 120 priority date requirement.

b) Attacks Errors in a Claim: If a claim has a typo or other error, this “regards as the invention” defense may be the best to assert. Like indefiniteness, it is a question of law well suited for summary judgment, on the rare occasion where it is a valid defense.

c) Consider filing a motion for summary judgment on this issue in conjunction with Markman.

2. Indefiniteness:

a) “The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.” 35 U.S.C. § 112, ¶ 2. Not part of Section 120. A claim is indefinite only if it is not amenable to claim construction:


If a claim is amenable to construction, ‘even though the task may be formidable and the conclusion may be one over which reasonable persons will disagree,’ the claim is not indefinite. Exxon Res. & Eng’g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001).

Aero Prods. Int’l, Inc. v. Intex Rec. Corp., 466 F.3d 1000, 1016 (Fed. Cir. 2006) (internal quotations omitted).

b) Consider filing a motion for summary judgment on this issue in conjunction with Markman.

V. Wording: “Must Not” as Important as “Must” A. What’s Best Analogy for a Patent Claim in Markman Context?

1. Recipe Seems Better Than Real Property Boundary.

a) While Property Rights are the Legal Consequence of a Patent Claim, the Claim Itself Does Not Purport to Define Property.

b) Claim Defines a Class of Things or Methods, Including, Perhaps, Structures, Functions, and Steps. This is Similar to a Recipe.

B. For Each Claim, Each Claim Phrase and Clause, and Each Claim Word, Always Consider Following Options:

Claim, Phrase, Clause, Term:

MUST … or NEED NOT … or (Silence) or …

MUST NOT … or MAY … or (Silence) or … Indefinite

C. There Likely are More Categories to Consider—Driven by How Best to Word a Construction to Bolster a Promising Defense or Redesign.

D. We Claim “Vegan Tofu Stir Fry.”

1. MUST be/include/have … Tofu, Oil, Vegetable, Heat Source

2. NEED NOT be/include/have … any Particular Vegetable

3. MUST NOT be/include/have … Meat (or Chicken), Dairy, on Fire

4. MAY be/include/have … Spices, Wine

E. Examples from Recent Case (Veritas v. Microsoft) in Seattle (Master’s May 25, 2007, Recommended Constructions, adopted by Judge Coughenour on September 12, 2007):

1. MUST: “‘storage device’ to mean ‘a device for storing software and other digital data. The storage device is physically distinct from the second media.”

2. NEED NOT: “‘first media’ to mean a data storage material. The first and second media are not required to be physically distinct.”


3. MUST NOT: “The master further recommends that the Court construe ‘fully configured operating system’ in claims 1, 18, 30 and 33 as an operating system that is ‘tailored’ for the personal computer system on which it was installed, i.e., not an operating system installed from the original operating system installation disks without any configuration to the system on which the operating system is installed.”

4. MAY: “The master recommends that the Court construe the ‘loading’ related terms as (1) not excluding ‘restoring or loading a bit mapped image of the operating system,’ but (2) allowing retrieval and restoration of individual files from the backup media without a loss of data, even though the hard disk has been reformatted or repartitioned.”

F. Examples from Federal Circuit Rulings (all emphases added):

1. MUST:

a) “Although we agree that the surface need not be hexagonal, it must be outer with respect to the collar.” Harvey D. Gillespie v. Dywidag Systems International, USA, 501 F.3d 1285 (Fed. Cir. 2007).

b) “the claimed ‘lipophilic component’ must contain, at a minimum, a pharmaceutically acceptable lipophilic substance capable of dissolving cyclosporin, and that is a non-surfactant excipient” Novartis Pharmaceuticals Corp. v. Abbott Laboratories, 375 F.3d 1328, 1336 (Fed. Cir. 2004).

2. NEED NOT:

a) “One of skill in the art would understand the claim to cover a receiving means (not limited to a monitor) for receiving the video signals and the first code signals.” Elbex Video Ltd. v. Sensormatic Electronics Corp., 508 F.3d 1366 (Fed. Cir. 2007).

b) “Although we agree that the surface need not be hexagonal, it must be outer with respect to the collar.” Harvey D. Gillespie v. Dywidag Systems International, USA, 501 F.3d 1285 (Fed. Cir. 2007).

c) “…the method does not require any determination of a starting point for application of the blood sample to the matrix.” Home Diagnostics, Inc. v. Lifescan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004).

d) “In sum, the claims do not expressly require pressure jackets, and Medrad points to no clear disavowal of claim scope in either the written description or the prosecution history. In fact, the prosecution history indicates that the asserted claims were added to cover devices that lacked pressure jackets. For those reasons, we conclude that the district court erred in construing the claims at issue to require pressure jackets.” Liebel-Flarsheim Co. v. Medrad, Inc.,


358 F.3d 898, 912 (Fed. Cir. 2004).

e) “…does not limit the disputed phrases to any particular type of technology or specify a particular type of signal format, such as analog or digital.” SuperGuide Corp. v. DirecTV Enterprises, Inc, 358 F.3d 870, 878 (Fed. Cir. 2004).

f) “Accordingly, we conclude that the scope of the asserted claims should not be limited to the expression of exogenous DNA.” Amgen Inc. v. Hoechest Marion Roussel, Inc., 314 F.3d 1313, 1327 (Fed. Cir. 2003).

3. MUST NOT:

a) “We thus agree with both district courts that the term “directly” precludes the use of any third party service provider.” Emergis Technologies, Inc. v. PNM Resources, 263 Fed. Appx. 63 (Fed. Cir. 2008).

b) “the proper construction of ‘edetate’ is EDTA and derivatives of EDTA, such as salts, but not including structural analogs.” Abraxis Bioscience, Inc. v. Mayne Pharma (USA), Inc., 467 F.3d 1370, 1378 (Fed. Cir. 2006).

c) “…the return electrode ‘is not to contact the body at all during the performance of the claimed method.’” Arthrocare Corp. v. Smith & Nephew, Inc., 406 F.3d 1365, 1376 (Fed. Cir. 2005).

d) “the claimed ‘lipophilic component’ must contain, at a minimum, a pharmaceutically acceptable lipophilic substance capable of dissolving ciclosporin, and that is a non-surfactant excipient” Novartis Pharmaceuticals Corp. v. Abbott Laboratories, 375 F.3d 1328, 1336 (Fed. Cir. 2004).

e) “the limitation in claims 2 and 11 requiring that the bottom side merge with the bottom edge of the central portion of the front wall excludes the possibility that the bottom side also merges with the top edge.” Spectrum Int’l, Inc. v. Sterilite Corp., 164 F.3d 1372, 1380 (Fed. Cir. 1998).

4. MAY:

a) Affirming trial court construction of claim limitation “graphical objects” as follows: “a graphical object is a symbol and pertains to pictorial representations of data. Graphical objects are not text. Text is not a graphical object. A graphical object may include text. Text alone is not a graphical object.” Luma Corp. v. Stryker Corp., 2008 U.S. App. LEXIS 7669 (Fed. Cir. April 10, 2008).

b) “Thus, this court finds that the term "intermediary" can embrace magnetic substances, albeit only if the additional term


requirement of "alternating polarity" allows for it.” Intamin, Ltd. v. Magnetar Technologies, Corp., 483 F.3d. 1328, 1335 (Fed. Cir. 2007).

c) “the proper construction of ‘edetate’ is EDTA and derivatives of EDTA, such as salts, but not including structural analogs.” Abraxis Bioscience, Inc. v. Mayne Pharma (USA), Inc., 467 F.3d 1370, 1378 (Fed. Cir. 2006).

d) Adjustable: “the dynamic, live loaded seat can be adjusted while the de-heading system of claim 14 is in use.” Curtiss-Wright Flow Control Corp. v. Velan, Inc., 438 F .3d 1374 (Fed. Cir. 2006).

e) “The claim scope thus does not preclude preparatory steps in advance of step (a), including growth of E. coli at a temperature outside the step (a) range.” Invitrogen Corp. v. Biocrest Manufacturing, L.P., 327 F.3d 1364, 1370 (Fed. Cir. 2003).

f) “…claims 1 and 5 must also encompass aluminum with up to about 10% silicon” AK Steel Corp. v. Sollac, 344 F.3d 1234, 1242 (Fed. Cir. 2003).

G. When Silence is Defendant’s Friend

1. Normally the Plaintiff Prefers No Construction: Markman was a pro-defendant ruling. Patent owners fared better when juries (supposedly) decided the scope of a patent. The more the meaning of a claim is pinned down, generally the higher the prospects for the defendant winning at trial or developing a “safe harbor” redesign.

2. Some Terms are Best Not Construed: Carefully consider what important claim terms you do not want to be construed. You may, for example, prefer the ordinary, non-technical understanding of a claim term over a competing technical meaning. That ordinary, non-technical meaning is the default meaning for the Judge, law clerk, and Jury. Indeed, the Federal Circuit has ruled that the Jury must be assumed to have given non-construed terms their non-technical, ordinary meaning.

VI. Some Other Defenses That May be Advanced by These Alternative Forms of Construction (MUST … NEED NOT … MUST NOT … MAY)

A. Doctrine of Equivalents (DOE): There are many “matter of law” restrictions on the DOE, making this defense ripe for summary judgment. The following restrictions on DOE can be advanced by a Markman ruling. When choosing what claims and claim language to have construed in Markman, have these DOE restrictions in mind.

1. DOE may not effectively eliminate (vitiate) any claim element in its entirety.

2. DOE may not recapture subject matter disavowed in the written description.


a) Good reason to seek a “must not” construction

3. Prosecution History Estoppel

4. Public Dedication

a) A patent disclosing an embodiment or feature (as being in the prior art and/or as being an embodiment of the “invention”) without claiming it precludes coverage of that feature under the DOE. Johnson (Fed. Cir. 03/28/02); PSC (Fed. Cir. 01/20/04) (“Because PSC dedicated plastic clips to the public by explicitly claiming only clips made of metal while specifically disclosing that the prior art included clips made of plastic, we affirm [summary judgment of non-infringement].”). Intent not to claim the disclosed alternative is irrelevant; and issue is a matter of law. Toro (Fed. Cir. 09/13/04).

B. Inequitable Conduct: Seek construction with eye toward proving materiality of withheld or misstated information. E.g., construe an application claim that never issued, or terms from such a claim.

1. E.g., if applicants withheld a prior art reference, use language of that reference as part of your proposed MUST or MAY constructions, where appropriate.

2. E.g., if applicants promised superior performance and withheld test results undermining those promises, consider including those promised results as part of a MUST construction, to bolster the materiality of the withheld test results.

3. E.g., if a withheld reference is lacking something described in the patent but possibly not required by the claims, consider identifying that feature in a NEED NOT construction, to bolster the materiality of the withheld reference.

C. “Date of Invention”: “In order to establish an actual reduction to practice, the inventor must prove that: (1) he constructed an embodiment or performed a process that met all the limitations of the [claim]; and (2) he determined that the invention would work for its intended purpose.” Taskett (Fed. Cir. 09/26/03) (emphasis added).

1. E.g., study the evidence of alleged actual reduction to practice and—if you want to urge a later reduction to practice date than being sought by the patent owner—then consider adding to MUST constructions items missing from the alleged reduction to practice, and/or adding to MUST NOT constructions items present in the alleged reduction to practice.

D. Written Description:

1. To support a claim, a specification must describe the claimed subject matter. 35 U.S.C. § 112, ¶ 1. This validity requirement also is a priority date requirement under 35 U.S.C. § 120.


2. Not a Question of Obviousness: The claimed subject matter must be disclosed in the spec.; it is not good enough if the claimed subject matter is obvious in view of the specification’s disclosure. The specification’s disclosure of the claimed subject matter may be explicit or inherent (i.e., necessarily present).

3. Must be Sufficiently Detailed: The specification must describe the claimed invention in sufficient detail so that person of ordinary skill in the art can recognize what is claimed. “The appearance of mere indistinct words in a specification or a claim, even an original claim, does not necessarily satisfy that requirement.” (U. of Rochester (Fed. Cir. 02/13/04) (Extensive discussion of written description requirement and its history. Affirming summary judgment of invalidity under written description requirement.)

4. That Claim “Reads On” Spec. is Not Enough: Sometimes (e.g., Lockwood (Fed. Cir. 03/04/97)) a claim fails this written description requirement by adding an element not disclosed in the specification, in which case the claim does not “read on” the spec. Other times (e.g., Tronzo (Fed. Cir. 01/17/01), Gentry Gallery (Fed. Cir. 01/28/98), Lizardtech (Fed. Cir. 10/04/05)), however, a claim does “read on” the specification but still is not supported by the specification, because the claim omits an element required by the specification.

a) E.g., if (1) the application appears to require something as a “non-optional” element, (2) the claim is open to being construed as not requiring that element, and (3) the accused technology (including reasonable redesigns) include that element, then consider adding this feature to a “NEED NOT” construction.

E. Future Technology: Chiron v. Genentech (Fed. Cir. 03/30/04) (Series of CIPs filed. Last application defined claim term “monoclonal antibody” to include chimeric and humanized antibodies. Prior applications did not enable (and/or did not disclose) use of chimeric antibodies. Thus, claims not entitled to earlier applications’ filing dates, and thus anticipated by intervening prior art. Affirmed denial of JMOL seeking to overturn jury verdict of invalidity.)

1. (J. Rader) held that future technology encompassed by a claim need not be enabled, but it must be described in the application to satisfy the written description requirement. “The jury may have found that the 1984 application does not provide any support for the new matter, chimeric antibodies, claimed in the ‘561 patent. Because chimeric antibody technology did not even exist at the time of the 1984 filing, the record conclusively supports that the Chiron scientists did not possess and disclose this technology in the February 1984 filing.”

2. E.g., study what class of embodiments is covered by the literal claim language but did not exist (or was nascent) at time of the application or alleged priority application, and consider identifying that class of embodiments as part of a MAY construction.


F. Enablement:

1. Also in Section 112, ¶ 1, and therefore Section 120. Enablement requires that the disclosure teach person of skill in the art to make or carry out the claimed invention without undue experimentation. The specification must enable the “full scope” of the claim, but this does not require that each conceivable embodiment within the claim be enabled. “‘That is not to say that the specification itself must necessarily describe how to make and use every possible variant of the claimed invention, for the artisan’s knowledge of the prior art and routine experimentation can often fill gaps, interpolate between embodiments, and perhaps even extrapolate beyond the disclosed embodiments, depending upon the predictability of the art.’ AK Steel Corp. v. Sollac, 344 F.3d 1234, 1244 (Fed. Cir. 2003).” (Chiron v. Genentech (Fed. Cir. 03/30/04)).

a) good reason to seek a “MAY” construction

G. Effective Filing Date (Priority Date) Under Section 120: A “priority application” must “support” the claim re best mode, enablement, and written description, but not “regards as the invention.” A claim construction ruling might help you establish that claims are not supported by ancestor application.

1. Do not assume that a claim in a “continuation” patent is entitled to an ancestor application’s filing date, or any patent is entitled to a provisional’s filing date.

2. E.g., if you spot something in final application in the family chain that is missing from earlier application(s), consider including that as part of a MUST construction.

a) This was result in PowerOasis case, albeit it was the patent owner who insisted on the “may include” construction that invalidated its patent: Parent disclosed user/customer interface only on vending machine. CIP added embodiments where user interface was on customer’s laptop. Claim construed ivo CIP’s disclosure to mean customer interface covered either location. As a result, claims not entitled to original application filing date, and on summary judgment were invalid for anticipation. PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299 (Fed. Cir. 2008).

3. Or, if earlier application(s) in the family chain required a feature as a non-optional element of the “invention,” and final application dropped that requirement, then consider identifying that feature as a NEED NOT construction.

H. Anticipation:

1. Anticipation must be based on a single prior art reference that discloses each and every element of the claim. See 35 U.S.C. § 102. A prior art reference’s disclosure is tested in essentially the same manner as is


a specification under the “written description” requirement (i.e., it may be explicit or inherent). Extrinsic evidence may be considered to prove what’s disclosed inherently in the single reference. Disclosing a genus does not inherently disclose all species within that genus.

2. Anticipation is Asymmetric With Sec. 112 Support: The same text can anticipate a claim without supporting it under Sec. 112. The text (e.g., published foreign counterpart) might, e.g., describe and enable an embodiment within the scope of the claim, but not describe and/or enable the full scope of the claim as required by Section 112.

a) E.g., bolster an anticipation defense by identifying something in your best prior art as part of a “MAY” construction.

b) Per “Seek Equal Treatment” point above, consider explaining to the Court your prior art, telling Court that person of ordinary skill in the art would have known of the art, and would have construed the claims in light of that art.

3. In your claim construction, use terminology from your best prior art.

I. Section 135 “Pseudo” Prior Art:

1. “(1) A claim which is the same as, or for the same or substantially the same subject matter as, a claim of an issued patent may not be made in any application unless such a claim is made prior to one year from the date on which the patent was granted. (2) A claim which is the same as, or for the same or substantially the same subject matter as, a claim of an application published under section 122(b) of this title may be made in an application filed after the application is published only if the claim is made before 1 year after the date on which the application is published.” 35 U.S.C. § 135(b).

2. Often Overlooked, but Legitimate Application: Section 135(b) is often overlooked in litigation because of the misperception that it applies only to interferences. For each asserted claim, you should determine when it was added to the application. One year before that is the “Sec. 135(b) critical date.” Patents issued before that may be Section 135(b) pseudo prior art, even though they are not Section 102 prior art.

3. Keep This in Mind During Claim Construction: If you’ve found a promising Sec. 135(b) pseudo prior art candidate, consider using the language of the prior patent claim in your construction of the challenged claim, to further cement the overlap between the “interfering” claims.

J. Public Use/On Sale: Avoiding “Experimental” Use/Sale:

1. If you’re concerned about “experimental use” defeating your “public use” or “on sale” defense, try to avoid the claim construction including features or uses that were subject of the testing: “a patentee should understand that testing the properties, uses, and commercial significance of a compound claimed solely in structural terms may start the


clock under § 102(b) for filing a claim that is not limited by any property, commercially significant amount, or other use of the compound.” Smithkline (Fed. Cir. 04/23/04).

K. Double Patenting and Divisionals:

1. Section 121 protects divisional applications from double patenting invalidity, but only to extent divisional’s claims were required to be claimed in the divisional, rather than in the original application, by a PTO restriction requirement. Bristol-Myers (Fed. Cir. 03/17/04) (Vacating denial of summary judgment of that Sec. 121 bars the asserted double patenting defense. “Bristol-Myers is entitled to invoke the [Sec. 121] statutory prohibition against the use of the ’707 patent “as a reference” against the divisional application that resulted in the ’927 patent only if the divisional application was filed as a result of a restriction requirement and is consonant with that restriction requirement.” Here, the earlier restriction requirement was not repeated in the later continuation application and thus Sec. 121 does not protect the patent owner).

a) E.g., include the restriction required by the Examiner as part of a NEED NOT construction, to bolster argument that the divisional claims are not consonant with that requirement.

L. Consider Reconsideration of Markman Constructions: As they are, in part, an advance ruling on Jury Instructions, a court may be more willing to reconsider claim construction rulings than some other pre-trial rulings. E.g., when briefing Jury Instructions, instead of merely weakly objecting to adverse claim construction rulings to preserve your position on appeal, consider another strong attempt to get the construction you want (using, e.g., new case law, previously uncited dictionaries, a supplemental expert declaration, etc.). Of course, the construction might get worse!

VII. Win Case by Losing Markman A. On many defenses, getting Court to pick between MUST and NEED NOT,

or between MUST NOT and MAY, is more helpful than getting no construction (silence). Often, the sooner you know what the claim does and does not cover, the easier it is to establish a winning defense on summary judgment, or trial.

1. E.g., a detailed, comprehensive claim construction can pave the way to:

a) a “safe haven” redesign for the client, leading to easier settlement; or

b) a “Grain Processing” acceptable non-infringing alternative on which you can base your damages defense.

2. E.g., if an element is described in the patent application, or ancestor application, as being a required, non-optional element, and the accused technology lacks that element (or painlessly can be redesigned to lack it), then a NEED NOT construction will help you win a “written description” or


“lack of priority date” defense, while the alternative MUST construction gives you a non-infringement defense or safe haven redesign.

VIII. Dance the Markman as Though No One is Watching A. Depends, of course, on client and Judge.

B. Include drawings in your proposed construction? An animation? Have fun.

C. Construe Claim As a Whole

1. The point of claim construction is not to create a mini dictionary for words found in a claim. Primarily, it is to explain to the jury (and public), as precisely and clearly as possible, the dividing line between what technology is literally covered by a patent claim versus what technology is not literally covered by the patent claim.

2. Sometimes, this is best accomplished by construing the claim as a whole, not just individual claim terms in isolation. See, e.g., Power Mosfet Technologies, LLC v. Siemens AG, 378 F.3d 1396, 1404 (Fed. Cir. 2004) (“The terms in the Special Master Report were construed in isolation, and at no other time did the district court or the Special Master construe the claims as a whole.”); id. at 1410 (This “limited construction left substantial ambiguity as to the meaning of the claims as a whole.”); id. at 1412 (“A construction of the claims as a whole would have been beneficial to the litigants.”).

IX. Markman and the Public Interest A. A clear and complete construction of a patent’s scope—defining as

precisely as possible both what it covers and what it does not cover—serves the public interest in copying and using unpatented technology, and in innovating advances on patented technology.

B. Per Supreme Court in Bonito Boats, the Patent Laws create a federal right to copy and use certain ideas. Uncertainty in the scope of a patent chills that right.

C. Uncertainty also chills innovation by others, with no counterbalancing benefit to the public.


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