Patents V Claim Construction Class Notes: March 7, 2003 Law 507 | Intellectual Property | Spring...

Patents VPatents VClaim ConstructionClaim Construction

Class Notes: March 7, 2003Class Notes: March 7, 2003

Law 507 | Intellectual Property | Spring Law 507 | Intellectual Property | Spring 20032003

Professor WagnerProfessor Wagner

3/7/033/7/03 22Law 507 | Spring 2003Law 507 | Spring 2003

Today’s AgendaToday’s Agenda

1. Clean Up: Obviousness & New Technologies

2. Claim Construction

a) Allocation of Authority (Who Decides?)

b) Interpretive Procedure (How?)


Nonobviousness Challenge 3: Nonobviousness Challenge 3: Software/Business ModelsSoftware/Business Models

1.1. Why do software and business model Why do software and business model patents offer a challenge?patents offer a challenge?

2.2. How should the courts deal with this?How should the courts deal with this?

Lockwood v. American Airlines (1997)Lockwood v. American Airlines (1997)Do you agree with the court that the Do you agree with the court that the lack of detail about the software lack of detail about the software component was fatal?component was fatal?What does this suggest about software What does this suggest about software patents?patents?


Challenge 3: Software/Business Challenge 3: Software/Business ModelsModels

Amazon.com v Barnesandnoble.com Amazon.com v Barnesandnoble.com (2001):(2001):• Note the procedural posture.• What do you think the court suggests

about the validity of the one-click patent?

• What does the court’s analysis suggest about software/business method/Internet patents more generally?• Is there a problem here?


The Centrality of Claim The Centrality of Claim ConstructionConstruction

““The Name of the Game is the Claims” (Judge Rich, 1990)The Name of the Game is the Claims” (Judge Rich, 1990)


What Does Claim Construction Look What Does Claim Construction Look Like?Like?

The claim at Issue in The claim at Issue in Markman v Westview Inst …Markman v Westview Inst …1. [An] inventory control and reporting

system, comprising; a data input device … a data processor including … means to maintain an

inventory total;a dot matrix printer … and, at least one optical scanner …, whereby said system can detect and localize

spurious additions to inventory as well as spurious deletions therefrom.

What does What does inventoryinventory mean? mean?1. Receivables (Westview system)2. Clothing3. Receivables + Clothing


Who Does Claim Construction?Who Does Claim Construction?

Markman (USSC 1996)Markman (USSC 1996)Note the Court’s description of claim construction: a

‘mongrel practice’

Traditional analysis of judge/jury issues:1. Is there a 7th Amendment guarantee of a jury trial?2. Does precedent command the allocation of

responsibility?3. Are there functional reasons to allocate responsibility?

Consider the Court’s functional analysis:a) Judges are more skilled at construing written

documentsb) Uniformity will be better served by the treatment of

claim construction as an issue for the judge.o How will this work? Do you agree?o What does this imply about the Federal Circuit?


Claim Construction: Allocation of Claim Construction: Allocation of AuthorityAuthority

Consider …Consider …

1.1. The timing of claim constructionThe timing of claim construction

2.2. Appellate review of claim constructionAppellate review of claim constructiona) Interlocutory appealsb) Note: Cybor v FAS Techs (1998) - de novo

reviewo Implications of Markman/Cybor?o ~40-50% reversal rate of district court claim

constructions


Interpretive Procedure:Interpretive Procedure:The Johnson Worldwide ApproachThe Johnson Worldwide Approach

Johnson Worldwide (Fed Cir 1999)invention: trolling motor steering apparatus

Key limitation:a) “a heading lock coupled to a trolling motor”

Issue: does the heading detector have to be physically attached to the trolling motor?


The Johnson Worldwide ApproachThe Johnson Worldwide Approach

InformationInformation DirectionDirection Weight?Weight?

Claim Language Claim Language

(plain meaning)(plain meaning)Unqualified, broad languageUnqualified, broad language

Written DescriptionWritten DescriptionInterchangeable use of “heading”Interchangeable use of “heading”

Possible inference that the preferred Possible inference that the preferred embodiment has a physical couplingembodiment has a physical coupling

DrawingsDrawings Figure 1 shows compass attached to Figure 1 shows compass attached to motormotor

Prosecution historyProsecution history

Inventor’s testimonyInventor’s testimony

Expert testimonyExpert testimony

Related referencesRelated references

Does ‘coupled’ mean ‘physically attached’?Does ‘coupled’ mean ‘physically attached’?

Interpretive SourcesInterpretive Sources


The Johnson Worldwide ApproachThe Johnson Worldwide Approach

The Johnson Worldwide “presumption”:1. Presume claim terms have their ordinary

meaning2. Two circumstances can override the

ordinary meaning:a)A patentee-provided definition

(lexicographer), orb)where the claim language is unclear.

Johnson Worldwide attempts to reconcile two conflicting canons of claim interpretation:1. Claims must be read as part of the

specification (i.e., in context)2. Claims cannot be limited by “reading in”

limitations from the specification


Dueling ApproachesDueling Approaches

Johnson Worldwide:Johnson Worldwide: a “Procedural” approach a “Procedural” approach• Strict hierarchy among information sources

Alternative: “Holistic” approachAlternative: “Holistic” approach• Consider entire context, totality of the circumstances

• Post-Post-MarkmanMarkman: 62% procedural, 38% holistic : 62% procedural, 38% holistic (n=406)(n=406)

• Judges: range from 93% procedural to 85% Judges: range from 93% procedural to 85% holisticholistic

What does this suggest about the What does this suggest about the

Supreme Court’s decision in Markman?Supreme Court’s decision in Markman?


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