Patent Claim Construction (Intellectual Property Law Series)

THIS CASEBOOK contains a selection of 129 U. S. Court of Appeals decisions that analyze, discuss and apply the doctrine of patent claim construction. The selection of decisions spans from 2012 to the date of publication.

A patent must "conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as [the] invention." 35 U.S.C. § 112, ¶ 2 (2006). Keeping in mind that "patents are not addressed to lawyers, or even to the public generally, but rather to those skilled in the relevant art," the patent claims "must be precise enough to afford clear notice of what is claimed, thereby appris[ing] the public of what is still open to them." Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014) (internal quotation marks omitted). A claim fails to satisfy this statutory requirement and is thus invalid for indefiniteness if its language, when read in light of the specification and prosecution history, "fail[s] to inform, with reasonable certainty, those skilled in the art [at the time the patent was filed] about the scope of the invention." Id. at 2124. Eidos Display, LLC. v. AU Optronics Corporation, (Fed. Cir. 2015).

To the extent possible, "the words of a claim are generally given their ordinary and customary meaning." Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (internal quotation marks omitted). The "ordinary and customary meaning of a claim term" is that meaning that a person of ordinary skill in the art in question, at the time of the invention, would have understood the claim to mean. Id. at 1313. "Because the meaning of a claim term as understood by persons of skill in the art is often not immediately apparent, and because patentees frequently use terms idiosyncratically," the court also looks to "the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art." Id. However, when doing so the court must stay ever vigilant to avoid reading limitations from the specification into the claim. Id. Enzo Biochem Inc. v. Applera Corp., (Fed. Cir. 2015).

[P]atentees can act as their own lexicographers if they "'clearly set forth a definition of the disputed claim term' other than its plain and ordinary meaning." Thorner v. Sony Computer Entm't Am., LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (quoting CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)). Vasudevan Software, Inc. v. MicroStrategy, Inc., (Fed. Cir. 2015).

"[A] court should discount any expert testimony that is clearly at odds with the claim construction mandated by the claims themselves, the written description, and the prosecution history, in other words, with the written record of the patent." Citing Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed. Cir. 2005). Eidos Display, LLC. v. AU Optronics Corporation, ibid.