1. CLAIM CONSTRUCTION FROM THE PERSPECTIVE
OF A TRIAL LAWYER
Presented by: Jerry R. Selinger
California  Texas  New Jersey  North Carolina

2. OVERVIEW OF CLAIM CONSTRUCTION
 Start from a goal
 avoid infringement (accused infringer)
 Avoid prior art but read on accused device(patentee)
 General guidelines from the Federal Circuit
2

3. Phillips , 415 F.3d 1303 (Fed. Cir. 2005) (en banc)
 In determining the meaning of a claim term, a
court may look to:
 the language of the claims,
 the specification,
 prosecution history, and
 extrinsic evidence.
3

4. Phillips, 415 F.3d at 1312-1313
 Claim terms are “generally given their ordinary
and customary meaning.”
 Ordinary meaning is “the meaning that the term
would have to a person of ordinary skill in the art
in question at the time of the invention” and “in
the context of the entire patent.”
4

5. Phillips, 415 F.3d at 1315
 “[T]he specification is always highly relevant to
the claim construction analysis.”
 “Usually, it is dispositive; it is the single best
guide to the meaning of a disputed term.”
5

6. Phillips, 415 F.3d at 1316
 A patentee may define his own terms,
 give a claim term a different meaning than the term
would otherwise possess,
 or disclaim or disavow claim scope.
 Or a patentee may rely on the meaning a term
would have to one of ordinary skill in the art.
6

7. Thorner v. Sony (Fed. Cir. Feb. 1, 2012)
 To act as a lexicographer, the patentee must
clearly do so by setting forth a definition of the
term other than its plain and ordinary meaning.
 The claim term was “attached to said pad.”
 Sony argued specification used “attached” to refer to
outside connection and “embedded” for internal
connection.
 District court ruled that “specification redefines
‘attached’ by implication”
7

8. Thorner v. Sony (Fed. Cir. Feb. 1, 2012)
 The Federal Circuit disagreed
 disavowal and lexicography require a clear and
explicit statement by the patentee
 Stated that merely disclosing an embodiment, or
criticizing a prior structure is not disavowal
 Sought to distinguish cases as being “pre-Phillips”
8

9. K-2 Corp., 191 F.3d 1356 (Fed. Cir. 1999)
 In claim construction, “[c]ourts do not rewrite
claims; instead, we give effect to the terms
chosen by the patentee.”
9

10. Narrowing Claims
 Both claim amendments and statements to
distinguish a claim over prior art can narrow
claim scope. Spectrum Int’l, Inc. v. Sterilite
Corp., 164 F.3d 1372, 1378 (Fed. Cir. 1998)
 The “prosecution history limits the interpretation
of claim terms so as to exclude any
interpretation that was disclaimed during
prosecution.” Southwall Techs., Inc. v. Cardinal
IG Co., 54 F.3d 1570, 1576 (Fed. Cir. 1995)
10

11. Deference to the District Court?
 Since 1998, claim construction has been a
question of law for the court.
 Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456
(Fed. Cir. 1998) (en banc)
 The Federal Circuit gives district court claim
constructions no deference.
 Even if the district court heard conflicting expert
testimony
11

12. Deference (cont’d.)
 The absence of any deference bothers district
court judges.
 It is why the Federal Circuit’s reversal rate on
claim construction has been so high.
 And the issue of claim construction as a pure
issue of law is a topic of internal debate at the
Federal Circuit.
12

13. THE ROLE OF THE SPECIFICATION
 Ongoing debate over line-drawing
 Within the Federal Circuit
13

14. The Role of the Specification
 It is improper to import a limitation from the
specification into the claims.
 See Phillips, 415 F.3d at 1323.
 But there “is a fine line between construing the
claims in light of the specification and improperly
importing a limitation from the specification into
the claims.”
 Retractable Tech., Inc. v. Becton, Dickinson & Co.,
653 F. 3d 1296, 1323-24 (Fed. Cir. 2011)
14

15. Retractable Tech., 653 F. 3d 1296
 In “reviewing the intrinsic evidence to construe
the claims, we strive to capture the scope of the
actual invention,”
 “rather than strictly limit the scope of claims to
disclosed embodiments”
 “or allow the claim language to become divorced from
what the specification conveys is the invention.”
15

16. Retractable Tech., 653 F. 3d 1296
 In Retractable Tech.,
 while the claims left open the possibility that a “body”
might encompass a syringe body composed of more
than one piece, “the specification tells us otherwise.”
 Consequently, a construction of “body” that limits
the term to a one-piece body “is required to
tether the claims to what the specifications
indicate the inventor actually invented.”
16

17. Retractable Tech., 653 F. 3d 1296
 Chief Judge Rader dissented:
 “The ordinary and customary meaning of ‘body’ does
not inherently contain a one-piece structural
limitation.”
 The “claims themselves, not the written description
portion of the specification, define the patented
invention.”
17

18. Atlantic Research, (Fed. Cir. 10/6/11)
 Patentee sought to limit claim construction
 Argued that certain claims should not be construed
more broadly than the specification.
 The district court construed those claims as
written and held them invalid for failure to meet
the written description requirement of § 112, ¶ 1.
 Federal Circuit affirmed
 It refused to ignore substantive differences between
claims or to “eviscerate” the plain meaning of the
claim language.
18

19. On Demand , 442 F.3d 1331 (Fed. Cir. 2006)
 Dispute over construction of “customer”
 Was “customer” limited to a retail customer? Or
anyone “who buys goods or services”?
 “The focus of the patent is immediate single-copy
printing and binding initiated by the customer and
conducted at the customer’s site.”
 The “definition of ‘customer’ cannot eliminate these
constraints in order to embrace the remote large
scale production of books for publishers and
retailers.”
19

20. Alloc, Inc. v. ITC, 342 F.3d 1361 (Fed. Cir. 2003)
 Three patents all shared a common specification
and claimed systems and methods of joining
floor panels.
 The Commission held that the claims all
included a “play” limitation, although none of the
asserted claims recited the term “play.” Id. at
1368
20

21. Alloc, 342 F.3d 1361
 The Federal Circuit affirmed, explaining that it
looks to whether “the specification read as a
whole suggests the very character of the
invention requires the limitation be a part of
every embodiment.” Id. at 1370
 The common specification “read as a whole
leads to the inescapable conclusion that the
claimed invention must include play in every
embodiment.” Id.
21

22. THE EVOLUTION OF § 112, ¶ 6
 Following In Re Donaldson Co., 16 F.3d 1189
(Fed. Cir. 1994)
22

23. The Language of § 112, ¶ 6
 “An element in a claim for a combination may be
expressed as a means or step for performing a
specified function without the recital of structure,
material, or acts in support thereof, and such
claim shall be construed to cover the
corresponding structure, material or acts
described in the specification and equivalents
thereof.”
 35 U.S.C. § 112, ¶ 6
23

24. Application of § 112, ¶ 6
 When a claim uses the term "means" in a
limitation, the inventor is presumed to have used
the term to invoke 35 U.S.C. § 112, ¶ 6.
 A court must first identify the function of the
limitation and then identify the corresponding
structure for that function disclosed in the
specification and linked to the function.
 B. Braun Med., Inc. v. Abbott Labs, 124 F.3d 1419,
1429 (Fed. Cir. 1997); In re Aoyama, 656 F.3d 1293,
1297 (Fed. Cir. 2011)
24

25. In re Aoyama, 656 F.3d 1293(Fed. Cir. 2011)
 This was an appeal from the PTO.
 Claims are given their “broadest reasonable
interpretation” during prosecution.
 Which is a different standard than applied during
litigation
 However, for means-plus-function limitations, the
“broadest reasonable interpretation” is the same
scope “statutorily mandated in paragraph six.”
25

26. In re Aoyama, 656 F.3d 1293
 The dispute was about what structure was disclosed
in the specification and linked to the function of
“generating transfer data.”
 The Board of Appeals found the function was linked
to “the flowchart of Figure 8.”
 However, Figure 8 disclosed insufficient structure so
the Board expanded its construction of “transfer data”
to include “shipping data.”
26

27. In re Aoyama, 656 F.3d 1293
 “The Board erred by identifying structure that was not
clearly linked or associated by the specification or
prosecution history with the function actually recited in
the claim, i.e., ‘generating transfer data.’”
 The only portion of the specification linked to the
function is the flowchart of Figure 8.
 The Board determined that Figure 8 “does not contain
sufficient structure to support the limitation.”
27

28. In re Aoyama, 656 F.3d 1293
 Where the disclosed structure is a computer
programmed to implement an algorithm, the patent
must disclose enough of an algorithm to provide the
necessary structure under § 112, ¶ 6.
 “The patentee may express this algorithm in any
understandable manner, including as a flowchart, so
long as sufficient structure is disclosed.”
28

29. In re Aoyama, 656 F.3d 1293
 “Figure 8 fails to describe, even at a high level, how a
computer could be programmed to produce the
structure that provides the results described . . . .”
 Because there is insufficient disclosure of structure
under § 112, ¶ 6, these claims are unpatentable as
indefinite under § 112, ¶ 2.
29

30. In re Katz, 639 F.3d 1303 (Fed. Cir. 2011)
 Began by referring to, Aristocrat, 521 F.3d at 1330-31,
where disclosed structure of “a standard micro-
processor based gaming machine” with “appropriate
programming” was indefinite.
 An algorithm needed to be disclosed to avoid pure functional
claiming.
 Pure functional claiming means all structure that could
perform the recited function.
30

31. In re Katz, 639 F.3d 1303
 One limitation in dispute was
 “a processing means . . . for receiving customer number data
entered by a caller and for storing the customer number data
. . . and based on a condition coupling an incoming call
to the operator terminal . . . .”
 The patent did not disclose an algorithm
corresponding to the highlighted language.
 One claiming a processor programmed to perform a
specialized function must disclose the internal
structure of that processor in the form of an algorithm
or the claim is invalid under § 112, ¶ 2.
31

32. In re Katz, 639 F.3d 1303
 Other claims recited “processing,” “receiving,” and
“storing.”
 Those functions can be achieved by any general
purpose computer without special programming.
 So the only structure needed to be disclosed was the
general purpose processor that performs those
functions.
 But see Ergo Licensing (Fed. Cir. 3/26/12)
 It is a rare circumstance when a general purpose computer,
without a disclosed algorithm, can constitute the structure
under § 112, ¶ 6.
32

33. In re Katz, 639 F.3d 1303
 Still other claims recited a system with an “interface
means for providing automated voice messages . . .
to certain of said individual callers, wherein said
certain of said individual callers digital enter
data.”
 IPXL, 430 F.3d 1377, held claims indefinite because
they claimed both an apparatus and a method of use.
 The Court rejected Katz’s argument that IPXL did not
apply because the “wherein” language defines
functional capability, not a method step.
33

34. Micro Chem., 194 F.3d 1250 (Fed. Cir. 1999)
 If the word “means” is not used, a claim element
is presumed NOT to invoke § 112, ¶ 6.
 But the presumption is overcome when a
limitation relies on functional language without
reciting sufficient structure to perform the
function.
34

35. MIT , 462 F.3d 1344 (Fed. Cir. 2006)
 Claim term was “colorant selection mechanism for
receiving said modified appearance signals and for
selecting corresponding reproduction signals
representing values of said reproducing colorants to
produce in said medium a colorimetrically-matched
reproduction.”
 Federal Circuit agreed the term needed to be
construed under § 112, ¶ 6.
35

36. Nilssen, 80 F. Supp. 2d 921 (ND IL. 2000)
 The court assumed “[f]or example that a claim
element specifies three functions, while the only
structure referred to there provides support for just
two of the three functions.”
 In that situation “Paragraph 6 governs the claim
element” even if “means” is not used.
36

37. Defining the Bounds of § 112, ¶ 6
 Microprocessor Enhancement Corp v. Texas
Instruments, Inc., 520 F.3d 1367 (Fed. Cir.
2008)
 Apparatus claims may use functional language to limit
the claims “without using the means-plus-function
format.”
 Where the claim uses functional language but recites
insufficient structure, § 112, ¶ 6 may apply despite the
lack of “means for” language.
37

38. Defining the Bounds of § 112, ¶ 6
 HTC Corp v. IPCom GMBH & Co., KG (Fed. Cir.
January 30, 2012)
 The limitation “arrangement for reactivating” was
construed under § 112, ¶ 6, even though it did not use
the word “means.”
 The specification needed to disclose adequate
hardware structure and software structure.
 But those are arguments the lawyers had to make to
the district court to preserve the arguments for
appeal.
38

39. Defining the Bounds of § 112, ¶ 6
 Typhoon Touch Techs., Inc. v. Dell, Inc. 659 F.
3d 1376 (Fed. Cir. 2011)
 “a memory for storing at least one data collection
application configured to determine contents and
formats of said inquiries displayed on said screen.”
 The district court construed this to be a “memory that
must perform the recited function.”
 Typhoon complained that the district court improperly
included a “use’ limitation in an apparatus claim.
39

40. Typhoon Touch, 659 F. 3d 1376
 Typhoon argued that it suffices if the memory is
capable of being configured to store data collection
applications, even if the memory is not so configured.
 The district court held that the memory is actually
programmed or configured to store the data collection
application.
 “No error of law or fact has been shown” in requiring
that the device be structured to store at least one data
collection application.
40

41. Typhoon Touch, 659 F. 3d 1376
 “Means for cross-referencing said responses
with one of said libraries of said possible
responses”
 District court held the specification did not contain an
“algorithm” adequate to provide structure.
 The Federal Circuit disagreed.
41

42. Typhoon Touch, 659 F. 3d 1376
 An algorithm can be expressed “in any
understandable terms including as a mathematical
formula, in prose, or as a flow chart, or in any matter
that provides sufficient structure.”
 “The specification states that cross-referencing entails
the steps of data entry, then storage of data in
memory, then the search in a library of responses,
then the determination if a match exists, and then
reporting action if a match is found.”
 That is a sufficient recitation, in prose, of the
algorithm.
42

43. Recent District court Markman rulings
 Alfred Levine v. Samsung, et al., No. 2:09-cv-
372 (ED TX)
 eDigital Corporation, et al. v. HTC America, Inc.,
et al., No. 09-cv-02578 (D CO)
 VPS, LLC v. SNO Studios, et al., No. 1:10-cv-
2142 (ND IL)
43

44. Levine , No. 2:09-cv-372 (ED TX)
 “Electronic Wireless Navigation System”
 Abstract:
 An electronic navigation system using wirelessly
transmitted video map images from one or more
ground based transmitters together with wireless
receivers having visual display available to travelers,
for receiving and displaying the video map images. In
one embodiment a cellular system is provided using
video map images covering different zones or cells of
a city or other community.
44

45. A picture is worth 1000 words
45

46. Levine , No. 2:09-cv-372
 2 patents, 13 claims in issue
 Claims 1, 3, 12-15 of No. 6,140, 943 and claims 1-3,
8, 14, 15 and 21 of No.6,243, 030
 “Video maps” –
 Defendants sought: “maps encoded as a video signal”
 The inventor agreed that “video map” is some kind of
“video signal”
 Spec disclosed downloading and converting into
analog signal form
 court construction: “maps that can be visually
displayed on the display of a wireless receiving
device”
46

47. Levine , No. 2:09-cv-372
 “Zones,” “cellular zones”
 Defendants sought: “a predefined subdivision of a
larger geographic area that is associated with a
transmitter”
 The dispute was whether the associated transmitter
must at a minimum transmit a map of its own zone
 “Neither the claim language nor the written
description justify a finding that the transmitter cannot
transmit a local area map for a different zone.”
 court construction: “subdivision(s) of a larger
geographic area that is/are associated with a
transmitter”
47

48. Levine , No. 2:09-cv-372
 “said receiver having a visual display . . . and
having means that responds to the traveler
becoming proximate to any of said streets to
change the display to remove that street name
from the visual display”
 One dispute was whether the claim should be
construed under § 112, ¶ 6.
 Another dispute was over the correct definition
of function.
48

49. Levine , No. 2:09-cv-372
 Plaintiff argued the function was the language
beginning with “change.”
 Defendants argued the function was, in essence,
everything after “means that.”
 The court agreed with Defendants on this issue.
49

50. Levine , No. 2:09-cv-372
 Plaintiff argued the structure could be a GPS
receiver circuit.
 Defendants argued the structure was an
ultrasonic generator, detector transducer,
retroreflector, converter and an image selector
circuit.
 The court generally agreed with Defendants
 But added as alternative structure video image signal
transmitter, receiving antenna 17, signal detector 18,
and image selector circuit/processor 24.
50

51. Levine , No. 2:09-cv-372
 “a map containing street-road signs in the area
of the location of the receiver”
 Plaintiff argued this meant the names of streets
or roads in the area
 Defendants argued the map must depict traffic
signs containing identification information for
roads.
 The district court agreed with Defendants.
51

52. eDigital, No. 09-cv-02578 (D CO)
 U.S. Patent Nos. 5,491,774 and 5,742, 737
 Abstract:
 “A record/playback device for use with a removable,
interchangeable, flash memory recording medium
which enables extended recording comparable with
tape cassette dictating equipment. The device
includes a housing, a microphone element, control
circuitry and a switch mounted on the housing for
selecting desired functional operations. A receiving
socket is coupled to memory circuitry . . . and is
configured for electrical coupling with a flash memory
module . . . .”
52

53. eDigital, No. 09-cv-02578 (D CO)
 One core term in dispute
 That flash memory is the “sole memory of the
received processed sound electrical signals.”
 Plaintiff - the device may use RAM as memory to hold
data while it processes the sound signal into digital
data ready for storage.
 Defendants - flash memory must be the sole writeable
memory in the device and that no RAM may be used
at any point in the device’s operation.
53

54. eDigital, No. 09-cv-02578 (D CO)
 According to the district court,
 Applicant had acted as his own lexicographer,
defining “processed sound signals” to mean the
output of three stages in the device.
 Once the information had passed through an A/D
converter, the patent referred to it as something other
than “processed sound signals.”
 Flash memory must be the sole way by which the
signals are thereafter stored in memory.
 Supported by argument during prosecution to overcome prior
art and extrinsic expert testimony
54

55. VPS, No. 10-cv-2142 (ND IL)
 Three related patents:
 Nos. 6,321,231; 6,332,146 and 7,487,155
 Field of the Invention:
 “The present invention relates generally to data
management and publishing, and, more particularly,
to a data management and order delivery system for
providing storage of data such as digital images and
for routing and delivering orders incorporating a
selected subset of the stored data to a publishing
facility or the like.”
55

56. VPS, No. 10-cv-2142 (ND IL)
 The specification conveys the twin concepts of:
 (1) access to every provider’s stored images being
limited to only persons authorized by the specific
image provider to view the images of that specific
image provider, and
 (2) stored images of every image provider being
transparent (i.e., invisible) to all others entitled to
access the closed system, are a critical aspect of the
invention.
56

57. VPS, No. 10-cv-2142 (ND IL)
 “Significantly, the digital data of every image
provider user 14 is transparent to all users
except those users authorized to view the
data.
57

58. VPS, No. 10-cv-2142 (ND IL)
 The specification discusses the features that
together work to impose complete transparency.
One feature is called an authorization scheme.
 “Each image provider user 14 is isolated from all
other image provider users 14 by a unique client
identification number.” Moreover, “[e]ach image
provider user 14 can specify users . . . who are to be
granted access to the files of that particular image
provider user 14. Each such specified user is
assigned a user name and password.”
58

59. VPS, No. 10-cv-2142 (ND IL)
 Each user also “is assigned a unique prefix code . . . .
[which] is used to secure the file stored in the
database management system from unauthorized
access.”
 Thus, access is granted not to the system in general,
but to specific image files of a particular image
provider.
59

60. VPS, No. 10-cv-2142 (ND IL)
 The second feature is called a login routine.
 “When the system determines that a user 12, 14, 16
is attempting to log in, the login routine is called.”
 “[T]he internet server 24 determines whether the
subject user has entered a valid client identification
number, a valid user identification name authorized
by the client and the appropriate password. If at any
of these steps the system determines that an
incorrect response has been entered, the login
routine is terminated.”
60

61. The Claims are Limited to the System
 “Transparent/transparency”
 “Having the properties that all users who are not
explicitly authorized and granted permission by each
asset provider/image provider to access such
provider’s digital images are prevented by the system
from accessing any such images and even from being
able to tell that any such provider has stored any
images on the system.”
61

62. The claims are limited to the system
 “Authorized users identified by/user”
 “A person for which an image provider has entered
contact and security status information into the
system’s administrative program, which person has
then registered with the system and been assigned a
user name and password linked to the designating
person’s unique client identification number.”
62

63. Terms not using means and §112, ¶ 6
 A storage device for [1] providing storage for digital
images of a plurality of unrelated image providers the
storage device storing the digital images of a first one
of the image providers [2] such that the digital images
of the first image provider can only be accessed by
authorized users identified by the first image provider
and [3] such that the digital images of the first image
provider are transparent to users that are not
authorized by the first image provider, the high
resolution digital images stored in the storage device
being received via the Internet.

63

64. Terms not using means and §112, ¶ 6
 My proposed construction is under § 112, ¶ 6
 A “storage device” stores digital data, and does not have the
functionality to perform the second and third recited
functions, viz., limiting access to only authorized users and
transparency.
 The specification discloses that the actual storing function is
performed by an optical data reader serviced by an optical
disk robot or a tape robot, together with database server 30.
Col. 6, lines 20-25. “[T]ask specific servers” – not a storage
device – are used to limit access to users authorized by the
image provider and to make images transparent to all other
users.
64

65. Terms not using means and §112, ¶ 6
 My proposed construction is under § 112, ¶ 6
 A “storage device” stores digital data, and does not have the
functionality to perform the second and third recited
functions, viz., limiting access to only authorized users and
transparency.
 The specification discloses that the actual storing function is
performed by an optical data reader serviced by an optical
disk robot or a tape robot, together with database server 30.
Col. 6, lines 20-25. “[T]ask specific servers” – not a storage
device – are used to limit access to users authorized by the
image provider and to make images transparent to all other
users.
65

66. Terms not using means and §112, ¶ 6
 Why does this matter?
 The task-specific servers require hardware and
software
 But no software or algorithm is disclosed
 The specification thus fails to disclose adequate
software structure for performing the limiting access
and transparency functions of this limitation. In re
Katz, 639 F.3d at 1315; In re Aoyama, 659 F.3d at
1297.
66

67. Terms Not Using Means and §112, ¶ 6
 “a storage device for storing digital images received
from a first digital image provider and a second digital
image provider.”
 This term has a different construction because it
needs to perform a different subset of functions.
 Not § 112, ¶ 6, but limited by functional recitations
 It must perform the function of storing digital images
received from a first digital image provider and a
second image provider. Typhoon Touch.
 Why does this matter?
67

68. Term Using Means and §112, ¶ 6
 “means for notifying an authorized user
identified by the first image provider that the
authorized user has been authorized to
download a low resolution copy corresponding
to one of the high resolution digital images,
wherein the notifying means transmits at least a
portion of a pathname associated with the low
resolution copy to the authorized user”
(underlining added).
68

69. Term using means and §112, ¶ 6
 Dispute over function
 “notifying”
 notifying an authorized user identified by the first
image provider that the authorized user has been
authorized to download a low resolution copy
corresponding to one of the high resolution digital
images
69

70. Term Using Means and §112, ¶ 6
 Why this matters
 There is no structure disclosed in the specification
that is linked to my view of function.
 The specification does disclose notifying a receiving
user that a job order is being sent.
 That, however, is very different from “notifying an
authorized user identified by the first image provider
that the authorized user has been authorized to
download a low resolution copy corresponding to
one of the high resolution digital images . . . .”
70

71. Tips on Claim Drafting
 Do not write “the invention is”
 If you described a closed system, your claims may be
limited to such a system.
 Carefully consider arguments you make during
prosecution.
71

72. Tips on Claim Drafting
 Make sure claims are supported by disclosure in
the specification.
 Drafting broadly can be good,
 Unless the specification does not enable a broad
coverage.
 If using functional language, consider
infringement.
72

73. THANK YOU
 QUESTIONS?
73