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Bow Tie No Design

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Bow Tie No Design

  1. 1. The Bow Tie of Patent Claim Construction By Andrew J. Fischer and David A. Jones R ecent articles have argued for harmonization of claim construction procedures performed during the prosecu- tion of patent applications at the United States Patent and Trademark Office (USPTO) and during the litigation of issued U.S. patents.1 These articles overlook the purpose and necessity of the dual claim construction methodologies embod- ied by the “Bow Tie of patent claim construction” (Bow Tie), which this article explores. The Bow Tie focuses on the comparative construction of claims during patent application prosecution and patent litigation. During prosecution, claim construction begins with a broad inter- pretation and is narrowed throughout the prosecution process.2 Conversely, during litigation, the claim construction framework begins with a contextually narrowed interpretation of the claims, which is broadened only so far as the specification and prosecu- tion history permit.3 When one places the two claim construction methodologies on a timeline, the result is a visual representation of the Bow Tie (see figure 1). To understand the purpose and application of the Bow Tie, this article provides a brief overview of the history of the pat- ent claim and discusses the legal application of the Bow Tie to patent claim construction. This article also addresses practical considerations regarding the need for the current dual claim construction paradigm and provides recommendations for more clearly delineating and applying the dual claim construc- tion methodologies during the appropriate proceeding. A Brief History of the Patent Claim In the beginning of U.S. patent law, there was no requirement for a patent claim. The first Patent Act4 “vested jurisdiction to issue patents in a Board consisting of the Secretary of State [as head of the Board], the Attorney General, and the Secretary of War.”5 The law was changed in 1793 to make the patent system a de facto registration system. For example, under the Act of 1793,6 patent granting became simply a clerical function, and patents were granted to anyone who applied and fulfilled the formal requirements, including filing the required papers and paying the required fee. Under this registration system, the sub- sequent enforcement of a patent was the first time validity was assessed. Consequently, early patent decisions often focused on issues of validity, even at the highest appellate level. During this time, courts in litigation struggled to determine what was “known or used before” and what was “new.”7 For example, in addition to a novelty requirement, courts desired certainty to deter- mine what was novel, as opposed to inference and conjecture. In Lowell v. Lewis, Justice Story stated that the patentee: should distinguish, what is new and what is old in his speci- fication, so that it may clearly appear, for what the patent is granted. . . . If, therefore, the description in the patent mixes up the old and the new, and does not distinctly ascertain for which, in particular, the patent is claimed, it must be void; since if it covers the whole, it covers too much, and if not intended to cover the whole, it is impossible for the court to say, what, in particular, is covered as a new invention. . . . It is, however, sufficient, if what is claimed as new appear with reasonable cer- tainty on the face of the patent, either expressly or by necessary implication. But it ought to appear with reasonable certainty; for it is not to be left to minute inferences and conjectures . . . .8 Although claims were not required, many patent applicants voluntarily summarized their invention nonetheless. As a result, courts began to hold inventors to their “summaries.” For example, in Moody v. Fiske, the court stated: It is often a serious difficulty from the obscure language of the specification, to ascertain what is the nature and extent of the invention claimed by the patentee. Whether his patent be valid or not, must materially depend upon the accuracy and distinctness with which the invention is stated. But in all cases where the patentee claims [anything] as his own invention, in his specification, courts of law cannot reject the claim . . . . [W]here a patentee in his specification states and sums up the particulars of his invention, and his patent covers them, he is confined to such summary[.]9 Because of dissatisfaction with the registration system and the problem of defining the nature and extent of the patented invention from the obscure nature of the specification identi- fied in Moody, Congress enacted a new Patent Act10 on July 4, 1836, which set forth many of the fundamental principles that still exist in patent law today.11 Unlike the de facto registration system of before, the Act of 1836 created a Patent Office and assigned to it the role of patent examination. Additionally, the Act of 1836 formally embraced the use of an invention “summary” and, for the first time, set forth a claim require- ment stipulating that the inventor “shall particularly specify and point out the part, improvement, or combination, which he claims as his own invention or discovery.”12 However, patent drafters did not embrace the formal requirement of a patent claim. Many still desired to set forth their invention in the specification and drawings, but not the claim. Nevertheless, to comply with the new statute, patent drafters often used “backfiring expressions,” such as “I claim the invention described herein,” to explicitly incorporate the specification or drawings into the claims.13 This was for good reason; many of these backfiring expressions helped maintain validity in subsequent litigation14 without holding the pat- ent owner to a more defined, limited scope of the claims and summary. This way the patent owner could selectively point to sections of the specification as the “claimed” invention while technically satisfying the statutory requirement to “particularly specify and point out the part, improvement, or combination, which he claims as his own invention or discovery.”15 The sufficiency of these backfiring expressions came under attack in 1870, when the statute was amended to read: “[H]e shall particularly point out and distinctly claim the part, improve- ment, or combination which he claims as his invention or Andrew J. Fischer is a graduate of the Thomas M. Cooley Law School and received his LL.M at the Washington College of Law, American University. David A. Jones is an associate at Maschoff Gilmore & Israelsen PLLC and a former patent examiner at the United States Patent and Trademark Office. The views expressed in this article are those of the authors and are not to be attributed to their clients or employers. The authors would like to thank Adam Weinacker and Rachel Jacques for their editorial assistance. Published in Landslide Volume 4, Number 3, January/February 2012. © 2012 by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
  2. 2. discovery.”16 Nevertheless, the use of backfiring expressions became even more widespread following the 1870 amendment. However, within a few years the circumvention of the statutory claim requirement by the use of backfiring expres- sions had become so widespread that in Ex parte Holt, USPTO Acting Commissioner Dyrenforth finally stated, “The aim, the end, the purpose of the claim is to point out particularly and distinctly define the invention to be secured to the individual. The claim is the measure of the patent and the day has passed when the courts will search through the specification for information which it is the very office of the claim to impart.”17 Thus, historically, there has been a strong desire to eliminate backfiring expressions, thereby requiring the claims alone to define the invention. In 1926, Congress adopted the United States Code, a codification of the existing general and permanent laws of the United States arranged in 50 titles according to subject matter and declared to be the prima facie evidence of the law.18 In the early 1900s, the desire to look to the specification remained in the form of interpreting claims “in the light of specifications as though the words ‘substantially as described’ were incorpo- rated in each claim.”19 Since the 1952 Act, the law has required the written description to end with at least one claim “particularly point- ing out and distinctly claiming the subject matter which the applicant regards as his invention.”20 And, in 2005, the Federal Circuit, en banc, decided Phillips v. AWH Corp., in which the court explained that “the specification is the single best guide to the meaning of a disputed term.”21 The court further stated, it is “entirely appropriate for a court, when conducting claim construction, to rely heavily on the written description for guidance as to the meaning of the claims.”22 However, as figure 1 illustrates, the concerns of Phillips should not be applied to the claim construction methodology during patent application prosecution. Rather, the concerns of Phillips are more appropriate for the claim construction methodology dur- ing the litigation of issued patents.23 And there are fundamental reasons for these differences.24 The distinction between the claim construction method- ologies in litigation and prosecution is important because, legally, the claims are the most important part of the patent. “The claims . . . give notice of the scope of patent protection. The claims give notice both to the examiner at the U.S. Patent and Trademark Office during prosecution, and to the public at large, including potential competitors, after the patent has issued.”25 As the Federal Circuit has said, “the name of the game is the claim,”26 and only that which is construed to be encompassed by the claim is allowed patent protection by the federal government. The Bow Tie of Modern Patent Claim Construction Although the patent claim has evolved as a necessary tool to place the public on notice as to the metes and bounds of patent protection,27 it is important to understand that there is a differ- ence between the claim construction methodology performed during prosecution and litigation.28 More specifically, claim construction during prosecution of a U.S. patent application begins with the broadest reasonable interpretation,29 and the applicant is allowed to argue and amend the claims as neces- sary to obtain allowance of the claimed invention.30 During litigation, however, claim construction begins with a contextu- ally narrowed interpretation,31 and the patentee is allowed to present evidence so as to broaden the claim scope only to the extent that the patentee is legally entitled.32 The claim construction methodology used during patent application prosecution at the USPTO is referred to as the “Morris Approach,” named after the landmark Federal Circuit case In re Morris,33 and the claim construction methodology used during patent litigation before a tribunal is referred to as the “Context Approach.” The Morris Approach is an interac- tive approach between the USPTO and the applicant.34 The USPTO has a duty to give claims the broadest reasonable interpretation.35 “This approach serves the public interest by reducing the possibility that claims, finally allowed, will be given broader scope than is justified.”36 The patent applicant provides arguments, amendments, and evidence to establish entitlement to the patent.37 And, “[a]bsent an express [lexico- graphic] definition in their specification, the fact that appel- lants can point to definitions or usages that conform to their interpretation does not make the PTO’s definition unreason- able when the PTO can point to other sources that support its interpretation.”38 Thus, the relevant inquiry under the Morris Approach is whether one of ordinary skill would consider the USPTO’s source of a broad interpretation as reasonable. During prosecution, the Context Approach is simply not used39 because the broadest reasonable interpretation is balanced by the ability to amend the claims.40 In both instances, the public interest is served by the relevant methodology.41 In In re Morris, the appellant essentially argued for application of the Context Approach, contending that the USPTO was required “in the course of prosecution to interpret claims in the same manner as courts are required to during infringement proceedings.”42 The Federal Circuit rejected that argument in stating that: The appellants urge us to consult the specification and some of the cited prior art, including Brown, and interpret the disputed language more narrowly in view thereof. When read in light of this material, according to applicants, the “true” meaning of the phrase emerges. We decline to attempt to harmonize the appli- cants’ interpretation with the application and prior art. Such an approach puts the burden in the wrong place. It is the applicants’ burden to precisely define the invention, not the PTO’s.43 The appellant further argued that the Federal Circuit was required to follow the contextual methodologies set forth in Markman v. Westview Instruments.44 The Federal Circuit again disagreed and stated that: [W]e reject appellants’ invitation to construe either of the cases cited by appellants [including Markman] so as to overrule, sub silentio, decades old case law. . . . Had either of the cases cited by appellants intended to make the dramatic shift in our jurisprudence suggested by appellants one can safely assume they would have done so explicitly. We need not, however, rely solely on assumption or inference. Both cases are readily distinguishable from the present case. The first, Markman, involved an infringement suit in the district court. This is a distinction with a difference.45 Published in Landslide Volume 4, Number 3, January/February 2012. © 2012 by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
  3. 3. Instead, the Federal Circuit reaffirmed the broadest reasonable interpretation standard.46 Thus, with the exceptions of lexicographic defini- tions47 and the invocation of § 112, paragraph 6, limitations48 —in which the specification is properly imported into the claims—during the Morris Approach, the claims are given their broadest reasonable interpretation. In contrast, the Context Approach employs a bal- ancing methodology that considers a totality of the evidence, with weighted importance given to the claims and specification, as well as consideration of prosecution history and extrinsic evidence.49 In Phillips, the Federal Circuit essentially reaffirmed the contextual analysis of Markman.50 However, as explained in Phillips, “The risk of systematic overbreadth is greatly reduced if the court instead focuses at the outset on how the patentee used the claim term in the claims, specification, and prosecution history, rather than starting with a broad definition and whittling it down.”51 Phillips rejected the dictionary based approach used in Texas Digital Systems, Inc. v. Telegenix, Inc., to ensure that during litigation claim construction begins with a contextually narrowed interpretation52 and the patentee is allowed to present evidence so as to broaden the claim scope only to the extent that the patentee is legally entitled.53 “The problem is that if the district court starts with the broad dictionary definition in every case and fails to fully appreciate how the specification implicitly limits that definition, the error will systematically cause the construction of the claim to be unduly expansive.”54 Concerns of systematic overbreadth also exist during prose- cution, but this is, in fact, the reason for the broadest reasonable interpretation. Adopting the Context Approach during prosecu- tion would result in similar unduly expansive construction of claims—the very essence of what Phillips was trying to guard against.55 This “Bow Tie” distinction is illustrated in figure 1. The basis for the dual claim construction methodologies is that during prosecution the patent applicant prefers that the USPTO take a narrow interpretation of the patent claims to promote allowance of the claims with minimal amendments. During litigation the patent owner (formerly patent applicant) desires a broad interpretation to capture additional infringing parties while enjoying the presumption of validity. In each instance, the public’s interest is to limit the patent applicants/ owners from obtaining more patent scope than they are right- fully entitled in exchange for the patent right. Starting with the key premise that the claims should cover only the subject matter invented, the court in Phillips noted that the “main problem” with Texas Digital and its dictionary usage approach is that such approach focuses too much on “the abstract meaning of words rather than on the meaning of claim terms within the context of the patent.”56 This “heavy reliance on the dictionary divorced from the intrinsic evidence risks transforming the meaning of the claim term to the artisan into the meaning of the term in the abstract.”57 And during prosecution the same key premise is served by the broadest rea- sonable interpretation: to promote the public-notice purpose of the patent claim and closely define what the invention is without looking back to the specification. That is, if claims are defined broadly during prosecution, the key problem of systemic overbreadth is not present because the patent examiner’s interpretation of a claim’s term or phrase is often broader than an applicant’s preferred interpretation set forth in the context of his or her specification. If claims are construed more broadly than contextually supported by the specification,58 then the problem with the Texas Digital approach, as set forth in Phillips, is simply not present during examination. Thus, applying the Context Approach, as set forth in Phillips, during ex parte examination would result in the issuance of more patent claims because claims that would otherwise have been rejected under the “broadest reasonable interpretation” standard would be allowed under the nar- row Context Approach. If the prime reason for adopting the Context Approach during litigation was to ensure that the claims covered only the invented subject matter, the same rationale equates to a broad interpretation during prosecu- tion—to ensure that the claim language issued in a patent clearly defines the invention.59 Practical Reasons for the Bow Tie In addition to public interest concerns, several practical differ- ences exist between patent prosecution and patent litigation.60 First, claims can be amended during prosecution and cannot be amended during litigation.61 This ability to amend the claims in response to the broadest reasonable interpretation provides the very historical context that Phillips sought to achieve.62 Second, the selective invocation of the Context Approach tends to make the Context Approach less predictable.63 In addition, the record is created during prosecution and appli- cation of the Morris Approach, producing the context explored later during the Context Approach. Therefore, the intrinsic evi- dence used in the Context Approach, in the form of prosecution Relative Claim Scope Initial Claim Scope Context Approach Morris Approach Ex Parte Examination Inter Partes Litigation Filing Date Patent Issuance Time (t) (a) (b) (c) (d) (e) Figure 1 –The BowTie of Patent Claim Construction Published in Landslide Volume 4, Number 3, January/February 2012. © 2012 by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
  4. 4. history, is in development during the Morris Approach. There are also monetary, efficiency, and predictability constraints during prosecution that are less evident during litigation. The parties involved in litigation, including district courts, are in a superior position to spend additional resources and time on claim interpretation. This is because: [t]rial judges can spend hundreds of hours reading and reread- ing all kinds of source material, receiving tutorials on technol- ogy from leading scientists, formally questioning technical experts and testing their understanding against that of various experts, examining on site the operation of the principles of the claimed invention, and deliberating over the meaning of the claim language.64 Conversely, patent examiners and attorneys engaged in patent prosecution generally do not enjoy such luxuries of time and resources on claim interpretation. In fact, the average number of hours for an examiner to understand the claimed invention, conduct a search for prior art, and make a first determination of patentability is about 10 hours.65 Although it has been said that amendment during prosecu- tion is costly, averaging between $1,920 and $3,680,66 the cost is relatively insignificant when compared to the cost of litigation, which averages between $3 million and $5 million, depending on whether an appeal occurs.67 Even the invalida- tion of patents using reexamination proceedings pales in com- parison with the costs associated with patent litigation.68 With about 480,000 patent applications filed each year,69 as opposed to around 2,700 patent litigations filed and 100 cases going to trial,70 there is a clear need for efficiency and simplification during prosecution.71 Therefore, the claim construction methodology during pros- ecution is further served by the inherent simplification of the broadest reasonable interpretation and the ability to amend the claims, in contrast to extended deliberations over the context of the claims performed during litigation. Recommendations In light of the Bow Tie, the following three recommendations are suggested: The first recommendation—directed toward creating a clear delineation between application of the Context Approach and the Morris Approach—is to recognize the pur- pose behind the dual claim construction paradigm represented by the Bow Tie. In conjunction with this recognition, statu- tory and common law guidance should be applied only to the extent that it conforms to this purpose. As such, cases directed to the Context Approach should not be followed during pros- ecution of patent applications. Likewise, with the inequitable conduct exception discussed in Therasense,72 cases directed to the Morris Approach should not be followed during litigation of issued patents. For example, in light of the historic, legal, and practical reasons to apply the Morris Approach discussed herein, the USPTO should discontinue its at least implicit endorsement of the Context Approach in its administrative guidance for prose- cution procedure.73 Much of the case law cited in the Manual of Patent Examining Procedure (MPEP) section 2111.01 involves interparty litigation.74 Such case law should be reviewed and analyzed for its compliance with the Morris Approach and the century old prohibition against the use of backfiring expres- sions.75 Additionally, the USPTO should revert back to the August 2005 version of MPEP section 2111.01, in which only “CCS Fitness Factor #1” (lexicography)76 and “CCS Fitness Factor #4” (§ 112, paragraph 6)77 were allowed. The second recommendation involves the two major excep- tions to the “broadest reasonable interpretation:” (1) 35 U.S.C. § 112, paragraph 6, and (2) lexicographic definitions. When drafting patent specifications, patent applicants should first carefully consider the use of “mean plus function” language, especially for computer implemented inventions. Even if a patent application as filed does not initially include any claim phrases that invoke § 112, paragraph 6, patent appli- cants should nevertheless ensure that their specification has sufficient disclosure such that the specification clearly links and associates corresponding structure to a desired function. Second, patent applicants also should carefully consider and strategically select chosen glossaries or other explicit lexico- graphic definitions. Regardless of whether courts eventually adopt either the Morris Approach or the Context Approach, lexicographic claim construction is the same for both approaches. The use of lexicographic definitions is the easiest and most consistent way to get the claim interpretation desired by the patent applicant. And, as the primary enforcer of the notice function of patent claims, the USPTO should insist that any exception to the broadest reasonable interpretation be explicitly made on the record. For example, while the Context Approach allows for implicit invocation of lexicography, it should not be allowed under the Morris Approach. If the patent applicant desires to use a lexicographic definition from his or her specification, the USPTO should insist that the definition be explicitly made clear on the record instead of its current practice of allowing implicit lexicography.78 During examination, the applicant still has an opportunity to amend the claims to include a desired definition of a term or phrase if needed for patentability. Therefore, a requirement for explicit lexicography would provide strong support for the notice function of the claims. Finally, the third recommendation is directed to the use of reexamination or post grant review as the preferred methods for invalidating issued patents. This is because, as a patent litigation defendant, the broadest reasonable interpretation of the Morris Approach is the ideal claim construction methodol- ogy for invalidating an issued patent as opposed to the narrow Context Approach claim construction. In the recent case of Microsoft v. i4i Ltd. Partnership, the defendant, Microsoft, argued that a “heightened standard of proof dampens inno- vation by unduly insulating ‘bad’ patents from invalidity challenges.”79 The U.S. Supreme Court noted in response that “Congress has amended the patent laws to account for con- cerns about ‘bad’ patents, including by expanding the reexami- nation process to provide for inter partes proceedings.”80 Although reexamination is not currently available for all potential invalidity arguments,81 as noted by Microsoft,82 had Microsoft’s invalidity evidence qualified for reexamination, Microsoft could have easily obtained the desired preponder- ance of the evidence standard simply by choosing the USPTO Published in Landslide Volume 4, Number 3, January/February 2012. © 2012 by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
  5. 5. as its invalidating venue. In addition to the lower evidentiary standard for invalidity, the claim construction analysis during reexamination begins with the Morris Approach,83 where claim terms are given their broadest reasonable interpretation as opposed to a narrow interpretation under the Context Approach in litigation. As a result, claims are more likely to be invalid under the broad Morris Approach than under the narrow Context Approach in addition to the lower evidentiary standard. For example, during reexamination, the specification is not contextually consulted, the prosecution history (sometimes called “prosecu- tion disclaimer”)84 is generally not considered, and the overall context of the patent application is once again not relevant to the patentability inquiry. And the patent owner is once again allowed to amend the claims to obtain a reexamination certifi- cate of a modified claim. Thus, a specific patent claim is more likely to be found invalid when its claim terms are assigned the broadest reasonable interpretation of reexamination as opposed to a contextually narrowed interpretation of litigation. n Endnotes 1. See, e.g., Dawn-Marie Bey & Christopher Anthony Cotropia, The Unreasonableness of the Patent Office’s “Broadest Reasonable Interpretation” Standard, 37 AIPLA Q.J. 285, 288 (2009) (arguing for a “consistent claim interpretation methodology throughout the patent system”); Joel Miller, Claim Construction at the PTO—The “Broadest Reasonable Interpretation . . .,” 88 J. Pat. & Trademark Off. Soc’y 279 (2006); Michael Risch, The Failure of Public Notice in Patent Prosecution, 21 Harv. J.L. & Tech. 179 (2007). 2. See U.S. Patent & Trademark Office, Manual of Patent Examining Procedure § 2111 (8th ed. Rev. 8, July 2010) [hereinaf- ter MPEP]; see also In re Carr, 297 F. 542, 544 (D.C. Cir. 1924) (“[W]e have uniformly ruled that claims will be given the broadest interpretation of which they reasonably are susceptible. This rule is a reasonable one, and tends not only to protect the real invention, but to prevent needless litigation after the patent has issued.”). 3. As the Federal Circuit described the proper approach in Phillips v. AWH Corp.: [a]lthough the Texas Digital line of cases permit[s] the dictionary definition to be narrowed in some circumstances even when there is not an explicit disclaimer or redefinition in the specification, too often that line of cases has been improperly relied upon to condone the adoption of a dictionary definition entirely divorced from the context of the written description. The problem is that if the district court starts with the broad dictionary definition in every case and fails to fully appreciate how the specification implicitly limits that definition, the error will systematically cause the construction of the claim to be unduly expansive. The risk of systematic overbreadth is greatly reduced if the court instead focuses at the outset on how the patentee used the claim term in the claims, specification, and prosecution history, rather than starting with a broad definition and whittling it down. 415 F.3d 1303, 1321 (Fed. Cir. 2005) (criticizing cases stemming from Texas Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193 (Fed. Cir. 2002)). 4. An Act to Promote the Progress of Useful Arts, ch. 7, 1 Stat. 109 (1790). 5. P.J. Federico, Commentary on the New Patent Act, 75 J. Pat. & Trademark Off. Soc’y 161, 164 (1993). 6. An Act to Promote the Progress of Useful Arts; and to Repeal the Act Heretofore Made for that Purpose, ch. 11, 1 Stat. 318 (1793). 7. Id. 8. 15 F. Cas. 1018, 1020 (D. Mass. 1817); see also McFarlane v. Price, 1 Stark. 199 (“It is essential to point out what is new and what is old. A patent ought to inform the person who consults it what is new and what is old. A person ought to be warned by the specification against the use of a particular invention.”); Evans v. Eaton, 16 U.S. (3 Wheat.) 454, 518 (1818) (Marshall, C.J.) (“In all cases where [a patentee’s] claim is for an improve- ment on a machine, it will be encumbent on him to show the extent of his improvement, so that a person understanding the subject may comprehend distinctly in what it consists.”). 9. 17 F. Cas. 655, 657–58 (D. Mass. 1820); see also Whitney v. Emmett, 29 F. Cas. 1074 (E.D. Penn. 1831) (Baldwin, J.) (“[T]he summary is equally binding.”). 10. An Act to Promote the Progress of Useful Arts, and to Repeal All Acts and Parts of Acts Heretofore Made for that Purpose, ch. 357, 5 Stat. 117 (1836) [hereinafter Patent Act of 1836]. 11. N.J. Brumbaugh & G.S. Rafter, History and Purpose of Claims in United States Patent Law 10 (1915) (“The obvious solu- tion of the problem was to require the inventor to formulate his invention in a claim or claims at the end of his description. This, the act of 1836 for the first time positively required.”). 12. Patent Act of 1836, supra note 10, § 6. 13. See 20 W.M. Wallace White, Patent and Trade Mark Review 374 (1921). 14. See Jeanne C. Fromer, Claiming Intellectual Property, 76 U. Chi. L. Rev. 719, 734 n.71 (2009) (noting common backfiring expression “substan- tially as described”). 15. Patent Act of 1836, supra note 10, § 6. 16. An Act to Revise, Consolidate, and Amend the Statutes Relating to Patents and Copyrights, ch. 230, 16 Stat. 198–217, § 26 (1870) (emphasis added). 17. See Brumbaugh & Rafter, supra note 11, at 17 (quoting Ex parte Holt, 29 O.G. 171 (1884)) (emphasis added). 18. See 1 U.S.C. § 204(a) (2006); cf. United States Nat’l Bank v. Indep. Ins. Agents of Am., Inc., 508 U.S. 439, 448 (1993). 19. R.M. Hollingshead Co. v. Bassick Mfg. Co., 73 F.2d 543, 546 (6th Cir. 1934); see also 35 U.S.C. § 112 (2006); Motion Picture Patents Co. v. Universal Film Mfg. Co., 243 U.S. 502, 510 (1917) (“The scope of every patent is limited to the invention described in the claims contained in it, read in the light of the specification.”). 20. An Act to Revise and Codify the Laws Relating to Patents and the Patent Office, and to Enact into Law Title 35 of the United States Code Entitled “Patents,” ch. 950, 66 Stat. 792 (1952) (codified at 35 U.S.C. §§ 1 et seq. (2006)). 21. 415 F.3d 1303, 1321 (Fed. Cir. 2005) (internal quotation marks omitted). 22. Id. at 1317. 23. See infra text accompanying notes 27–59. 24. See infra text accompanying notes 60–71. 25. Johnson & Johnston Assocs. Inc. v. R.E. Serv. Co., 285 F.3d 1046, 1052 (Fed. Cir. 2002) (en banc) (per curiam) (citations omitted). 26. In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998). 27. See Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1347 (Fed. Cir. 2010) (“[Claims’] principal function, therefore, is to provide notice of the boundaries of the right to exclude and to define limits.”). 28. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004); In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321–22 (Fed. Cir. 1989). 29. See MPEP, supra note 2, § 2111; In re Horton, 54 F.2d 961 (C.C.P.A. 1932) (“For this reason we have uniformly ruled that claims will be given the broadest interpretation of which they reasonably are suscep- tible. This rule is a reasonable one and tends not only to protect the real invention, but to prevent needless litigation after the patent has issued.” (internal quotation marks omitted)); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d at 1364; In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984). 30. See In re Yamamoto, 740 F.2d at 1572 (“An applicant’s ability to amend his claims to avoid cited prior art distinguishes proceedings before the PTO from proceedings in federal district courts on issued patents. When an application is pending in the PTO, the applicant has the ability to correct errors in claim language and adjust the scope of claim protection as needed. This opportunity is not available in an infringement action in district court. District courts may find it necessary to interpret claims to protect only that Published in Landslide Volume 4, Number 3, January/February 2012. © 2012 by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
  6. 6. which constitutes patentable subject matter to do justice between the par- ties.” (citing In re Prater, 415 F.2d 1393, 1404 (1969))). 31. See Phillips v. AWH Corp., 415 F.3d 1303, 1321–22, 1333 (Fed. Cir. 2005). 32. Id. at 1321. 33. 127 F.3d 1048 (Fed. Cir. 1997). 34. See In re Morris, 127 F.3d at 1054. 35. Spring Window Fashions LP v. Novo Indus., L.P., 323 F.3d 989, 994 (Fed. Cir. 2003) (“an examiner has the duty to police claim language by giving it the broadest reasonable interpretation” (citing In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000))). 36. In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984). 37. See id. 38. See In re Morris, 127 F.3d at 1056. 39. Id. 40. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). 41. See id.; Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1345 (Fed. Cir. 2010) (noting the need to describe one’s invention so the public can “understand and improve upon the invention”). 42. In re Morris, 127 F.3d at 1053. 43. Id. at 1056. 44. Id. at 1053 (citing Markman v. Westview Instruments, 52 F.3d 967 (Fed. Cir. 1995)). 45. Id. at 1054. 46. See id. 47. See id. at 1055; In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (“Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpre- tation. As this court has discussed, this methodology produces claims with only justifiable breadth.” (citing In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984))). 48. In re Morris, 127 F.3d at 1055; see also 35 U.S.C. § 112 (2006). 49. See Phillips v. AWH Corp., 415 F.3d 1303, 1319 (Fed. Cir. 2005); Stephany Ann Yonker, Post-Phillips Claim Construction: Questions Unresolved, 47 IDEA 301, 324 (2007). 50. Phillips, 415 F.3d at 1312 (stating “we reaffirm . . . today” a series of cases laying out the basic principles of claim construction, including Markman). 51. Id. at 1321. 52. See id. (“The problem is that if the district court starts with the broad dictionary definition in every case and fails to fully appreciate how the specification implicitly limits that definition, the error will systematical- ly cause the construction of the claim to be unduly expansive.” (criticizing Texas Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193 (Fed. Cir. 2002))); id. at 1321–22 (discussing the overbreadth of claim interpretation using broad definitions presented in dictionaries without the narrow context of the specification and prosecution history). 53. Cf. id. at 1317–19. 54. Id. at 1321. 55. Id. 56. Id. at 1321. 57. Id. 58. Should an interpretation of a claim term or phrase under the Context Approach actually be broader than the examiner’s initial determination— e.g., using a dictionary—the examiner could simply shift and use the speci- fication as an evidentiary “source” to establish a baseline or meaning under the broadest reasonable interpretation standard. In other words, the exam- iner is never prevented from using the specification as a source under the broadest reasonable interpretation standard. 59. See Risch, supra note 1, at 181–82. 60. See Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1289, 1300–01 (Fed. Cir. 2010) (describing the difference between the applica- tion of the overly broad duty of candor under Rule 56 during prosecution and the more narrowly applied requirements of inequitable conduct during litigation). 61. In re Yamamoto, 740 F.2d 1569, 1572 (Fed. Cir. 1984) (“An applicant’s ability to amend his claims to avoid cited prior art distinguishes proceedings before the PTO from proceedings in federal district courts on issued patents. When an application is pending in the PTO, the applicant has the ability to correct errors in claim language and adjust the scope of claim protection as needed. This opportunity is not available in an infringe- ment action in district court.”). 62. See Phillips, 415 F.3d at 1321. 63. See R. Polk Wagner & Lee Petherbridge, Did Phillips Change Anything? Empirical Analysis of the Federal Circuit’s Claim Construction Jurisprudence, in Intellectual Property and the Common Law (S. Balganesh ed., forthcoming 2012). 64. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1477 (Fed. Cir. 1998) (Rader, J., dissenting); see also Phillips, 415 F.3d at 1332 (discussing the length of Markman hearings). 65. See U.S. Patent & Trademark Office, Request for Quote (RFQ) and Statement of Objectives (SOO): Patent Examiners Production Expectancy Goals Re-Assessment and Adjustment; see also Eric B. Chen, Conflicting Objectives: The Patent Office’s Quality Review Initiative and the Examiner Count System, 10 N.C. J.L. & Tech. 28, 31–36 (2009); Memorandum from Peggy Focarino, Deputy Comm’r for Patents, to the Patent Examining Corps (Aug. 31, 2010), available at http:// www.popa.org/pdf/agreements/counts-counts-31aug2010.pdf (explaining that two examiner production counts is equal to a balanced disposal and the first count generally equates to the effort set forth in issuing a first action on the merits). 66. Bey & Cotropia, supra note 1, at 307 n.111 (citing Am. Intellectual Prop. Law Ass’n, Report of the Economic Survey (2007)). 67. See Richard D. Margiano, Cost and Duration of Patent Litigation, Managing Intell. Prop. (Feb. 1, 2009), available at http://www. managingip.com/Article/2089405/Cost-and-duration-of-patent-litigation. html. 68. For ex parte reexamination, the median cost of attorney fees in 2008 was $10,000; for inter partes reexamination, the median cost of attor- ney fees in 2008 through prosecution was $55,000; through appeal to the Appeal Board was $80,000, and through appeal to the Federal Circuit was $188,000. Am. Intellectual Prop. Law Ass’n, Report of the Economic Survey (2009). 69. See U.S. Patent & Trademark Office Patent Technology Monitoring Team (PTMT), U.S. Patent Statistics Chart: Calendar Years 1963–2010, available at http://www.uspto.gov/web/offices/ac/ido/oeip/taf/us_stat.htm. 70. See Stephan Kinsella, Patent Litigation Facts (Nov. 24, 2010), Center for Study of Innovative Freedom, http://c4sif.org/2010/11/ patent-litigation-facts/. 71. See supra note 3; Wagner & Petherbridge, supra note 63. 72. See Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1289, 1300–01 (Fed. Cir. 2010). It is also important for district court judges to understand the Bow Tie for application of the Morris Approach and the broadest reasonable interpretation when applying the “but for” test as opposed to a standard litigation-based Context Approach. 73. See, e.g., MPEP, supra note 2, § 2111.01 (“This means that the words of the claim must be given their plain meaning unless the plain meaning is inconsistent with the specification.”). 74. See id. § 2111.01 (8th ed. Rev. 6, Sept. 2007) (citing Chef Am., Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1372 (Fed. Cir. 2004); Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc); SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004); Liebel- Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004); E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003); SunRace Roots Enter. Co. v. SRAM Corp., 336 F.3d 1298, 1302 (Fed. Cir. 2003); Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003); Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1371 (Fed. Cir. 2003); Ex parte Technofirst S.A., No. 2009-010931 (B.P.A.I. Mar. 5, 2010) (“While Appellant points to examples of complex poly- nomial functions in the Specification (Reply Br. 9-11), the Examiner is correct that Appellant has not specifically defined that term therein (Ans. 24). However, while giving claim terms their broadest reasonable Published in Landslide Volume 4, Number 3, January/February 2012. © 2012 by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
  7. 7. interpretation is correct and proper, such interpretations need to be made in view of the specification. See Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005). With such a standard, we do not find the Examiner’s alternate interpretations to be consistent with the instant Specification.”). 75. See Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1347 (Fed. Cir. 2010) (en banc) (“As the Supreme Court stated in admonishing this court, we ‘must be cautious before adopting changes that disrupt the settled expectations of the inventing community.’” (quoting Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 739 (2002))); Brumbaugh & Rafter, supra note 11 (admonishing against the use of backfiring expressions). 76. See MPEP, supra note 2, § 2111.01 (8th ed. Rev. 3, Aug. 2005) (“This means that the words of the claim must be given their plain meaning unless applicant has provided a clear definition in the specification. . . . It is only when the specification provides definitions for terms appearing in the claims that the specification can be used in interpreting claim language.”). 77. See id. (“There is one exception, and that is when an element is claimed using language falling under the scope of 35 U.S.C. 112, 6th para- graph (often broadly referred to as means or step plus function language). In that case, the specification must be consulted to determine the structure, material, or acts corresponding to the function recited in the claim.”). 78. See id. § 2111.01(IV) (“The specification should also be relied on for more than just explicit lexicography or clear disavowal of claim scope to determine the meaning of a claim term when applicant acts as his or her own lexicographer; the meaning of a particular claim term may be defined by implication, that is, according to the usage of the term in >the< context in the specification.”). 79. 131 S. Ct. 2238, 2251 (2011). 80. Id. at 2252 (citing Optional Inter Partes Reexamination Procedure Act of 1999, 113 Stat. 1501A-567, codified at 35 U.S.C. §§ 311 et seq.). 81. It is limited to “writ[ten] prior art consisting of patents or printed publications,” 35 U.S.C. § 301, and “applied under the appropriate parts of 35 U.S.C. 102 and 103,” see MPEP, supra note 2, § 2609 (8th ed. Rev. 8, July 2010), but does not address inventorship, best mode, sufficiency of disclosure, indefiniteness, public use or sale prior to one year, or any of the other challenges to patentability. 82. Microsoft, 131 S. Ct. at 2251–52. 83. In re Yamamoto, 740 F.2d 1569, 1572 (Fed. Cir. 1984). 84. See Todd R. Miller, The “Doctrine of Prosecution Disclaimer” in Construing Patent Claims, 86 J. Pat. & Trademark Off. Soc’y 931 (2004); F.O. Richey, File Wrapper Estoppel, 23 J. Pat. & Trademark Off. Soc’y 559 (1941). Published in Landslide Volume 4, Number 3, January/February 2012. © 2012 by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.

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