Patent Claim Construction (Intellectual Property Law Series)

THIS CASEBOOK contains a selection of 220 decisions of the U. S. Court of Appeals for the Federal Circuit that analyze and discuss issues surrounding patent claim construction. The selection of decisions spans from 2004 to the date of publication.

In construing claims, th[e] court relies primarily on the claim language, the specification, and the prosecution history. Phillips v. AWH Corp., 415 F.3d 1303, 1314-17 (Fed.Cir. 2005) (en banc). After considering this intrinsic evidence, a court may also seek guidance from extrinsic evidence such as expert testimony, dictionaries, and treatises. Id. at 1317-18. HW Technology, LC v. Overstock. com, Inc., 758 F. 3d 1329 (Fed. Cir. 2014).

Ultimately, "[t]he construction that stays true to the claim language and most naturally aligns with the patent's description of the invention will be, in the end, the correct construction." Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250 (Fed.Cir.1998). Takeda Pharmaceutical Co. v. Zydus Pharmaceuticals, 743 F. 3d 1359 (Fed. Cir. 2014).

Although courts are permitted to consider extrinsic evidence like expert testimony, dictionaries, and treatises, such evidence is generally of less significance than the intrinsic record. Phillips, 415 F.3d at 1317 (citing C.R. Bard Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed.Cir.2004)). VirnetX, Inc. v. Cisco Systems, Inc., 767 F. 3d 1308 (Fed. Cir. 2014).

Claim terms are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc). Such a skilled artisan reads claim language in the context of the claims, the specification, and the prosecution history, using them to resolve any uncertainties. Though the claim term may appear plain on its face, we may depart from that plain meaning "1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of the claim term either in the specification or during prosecution." Thorner v. Sony Computer Entm't Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (citation omitted). Info-hold, Inc. v. Applied Media Tech. Corp., (Fed. Cir. 2015)

Claim construction is a question of law [ ] review[ed] without deference. HW Technology, LC v. Overstock. com, Inc., ibid. While the ultimate construction of a claim term is a legal question reviewed de novo, underlying factual determinations made by the district court are reviewed for clear error. Teva Pharm. USA, Inc. v. Sandoz, Inc., No. 13-854, 2015 WL 232131, at *11 (U.S. Jan. 20, 2015). Specifically, "when the district court reviews only evidence intrinsic to the patent (the patent claims and specifications, along with the patent's prosecution history), the judge's determination will amount solely to a determination of law, and the Court of Appeals will review that construction de novo." Id. at *10. However, when the district court looks beyond the intrinsic evidence and consults extrinsic evidence, for example to understand the relevant science, these subsidiary fact findings are reviewed for clear error. Id. Enzo Biochem Inc. v. Applera Corp., (Fed. Cir. 2015).

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