The question which usually arises first is why is it called “claim construction” and not “claim interpretation”? Is there a difference between “interpretation” and “construction”? Interpretation generally means imputing a particular meaning to words depending on the context of their use whereas construction refers to lending a logical meaning to a particular provision as a whole or set of provisions to ensure consistency among them. When and why does one resort to claim construction? Claim construction is undertaken both during the examination of a patent application or when a patent is under scrutiny by and before a Court of law where the primary intention is to set the metes and bounds of the claims to understand if the application covers prior art or if the invention so claimed has been infringed, as the case may be.
Ultimately, the objective of claim construction is to understand what a claim means; it was often said earlier that the purpose of a claim is not to claim anything new in the specification but to disclaim what exists in the prior art. Subsequently, the practice of including “positive” claims started in the US in 1822 which was later adopted in the UK. The development of the law on claim construction itself led to evolution of two different tests for infringement; the first one being the “literal infringement” test where all elements are taken into account and the second one being the “substantive infringement” test where the “pith and marrow” approach is employed.
Construction of claims is a matter of law which means it is the duty of the judge to etch the contours of the patent (In the US this was clarified in the Markman case where it was held that it was the duty of the judge and not the jury to construe claims). Strictly speaking, the Court steps into the shoes of a fictional person i.e. a person skilled in the art at the relevant date of filing of the patent and embarks on a hypothetical factual enquiry than a legal one. Over the years, Courts have developed several rules with regard to construing claims; one of the essential objectives of the rules is to give claims the same interpretation for all purposes at all times. Therefore, before issues such as infringement or validity are discussed, the scope of the claims must be clearly construed so that it is uniformly applied to either infringement or validity. The corollary to this in cases of infringement is that a patent should not be construed with a narrow reference to the defendant’s product.
The first step is to give meaning to the words and phrases in a claim before one decides what the essential and non-essential elements are. Such interpretation is to be made with reference to a person who is skilled in the art and is conversant with the jargon used generally. A word must be given its ordinary meaning unless a dictionary meaning has been ascribed or reference has been made to a publicly available document where the word has been used.
In cases where the Court needs expert assistance, it may seek the help of experts from the field. The rule with regard to use of an expert is similar to the general principles of evidence wherein the expert’s role is limited to helping the judge understand the scope of the claims better and not to interpret it himself. Also, it is not incumbent upon the Court to concur with the view of the expert and may construe the claim independently despite a view to the contrary being submitted by the expert.
What should be the standard of review? I ask this because s.103 of the US Act talks of a person with “ordinary” skill in the art and s.112 talks of “any person” skilled in the art. What exactly is the difference between the two and how does it affect the review of the patent? This is something I believe practitioners are best placed to answer and I humbly seek their opinion.
Since claim construction can make for dry reading, I shall continue with this discussion in the next post with specific attention being focussed on “purposive construction” and use of various parts of the patent in construing its scope.
In my view,claim construction is a good topic for debet, especially the inputs have to come from the senior practitioners who are the members of Spicy IP. The debet will really enhance the budding attornys giving them a legal overview on claim construction.
In addition to this, we also need to know how diffrent Patent systems, througout the the world highlights on this claim constructions.
Ananth.S
quite informative post…i have a suggestion..while explaining, would you mind giving examples? i mean, application of principle of construction on a hypothetical patent claim….this will help in better understanding of the concept.
@Ananth: I agree and i hope we get to hear from senior practitioners…
@Mathews: Thats a very valid point you make because a theoretical or normative discussion on such an application-oriented topic is not the best way to explain the issues involved. Though my experience in the practical aspects in not worth writing home about, i shall try my best to come up or atleast point to examples to make the posts more meaningful. I also request you to share examples which you know of for the benefit of the readers.
Bests,
J.Sai Deepak.
The “person having ordinary skill in the art” vide 35 U.S.C. §103(a), is a hypothetical- not actual- person. Panduit Corp. v. Dennison Manufacturing Co. 810 F.2d 1561, 1566 (Fed. Cir. 1987). Those of ordinary skill in the art may be presumed to have knowledge of arts “reasonably pertinent to the particular problem with which the inventor was involved.” Pentec, Inc. v. Graphics Control Corp. 776 F.2d 309, 313 (Fed. Cir. 1985), quoting In re Wood, 599 F.2d 1032, 1036 (CCPA 1979).
The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of the invention. Factors that may be considered in determining the level of ordinary skill in the art may include:
(1) “Type of problems encountered in the art.”
(2) ‘Prior art solutions to those problems.”
(3) “rapidity with which innovations are made.”
(4) “sophistication of the technology.” And
(5) “educational level of active workers in the field. In a given case, every factor may not be present, and one or more factors may predominate.”
See In Re GPAC, 57 F.3d 1573,1579,35 USPQ2d 1116,1121(Fed.Cir.1995); Custom Accessories, Inc. v. Jeffrey-Allan Indus.,Inc., 807 F.2d 955,962,1 USPQ2d 1196,1201 (Fed.Cir.1986); Envtl. Designs, Ltd. V. Union Oil co., 713 F.2d 693,696, 218 USPQ 865,868(Fed.Cir.1983).
In KSR International Co. v. Teleflex Inc., 550 U.S. __, 82 USPQ2d 1385 (2007), it has been held:
“A person of ordinary skill in the art is also a person of ordinary creativity, not an automation.”
Good work J.Sai Deepak… ur article becomes a gud reference in tvs v Bajaj judgment.
The judges heavily relied upon ur article while stating about the technology
Thanks Ayush…
Bests,
J.Sai Deepak.
In Cartner v. Alamo, a finding that claims 5 and 12 of the ’284 patent are invalid for failure to meet the written description requirement of 35 U.S.C. § 112 was reversed on the basis of improper claim construction by the district court.
Hello Sai,
What about “Claim Construction – II” ?
Meanwhile, I reproduce an article which appeared in IP Frontline. I found it to be a good read.
British Claim Construction, a Model of Simplicity
Wednesday, July 29, 2009
by: Harold C. Wegner
Today in W L Gore & Associates GmbH v. Geox SPA, [2009] EWCA Civ 794 (High Court 2009)(Jacob, J.), American patent experts who have experienced the horrors of domestic claim construction are provided a comparative example that claim construction can be a simple exercise.
Citing only one case (from the pen of perhaps the most important contemporary judicial patent wordsmith of the English language in Kirin Amgen v TKT [2005] RPC 9 [¶ 30]-[¶ 35] (Hoffmann, J.)), the Lord Justice boils down claim construction to a simple sentence:
“The task for the court is to determine what the person skilled in the art would have understood the patentee to have been using the language of the claim to mean.”
America at One Time had a Simple Claim Construction Regime: American claim construction through the early 1980’s was also relatively simple without, for example, the need to decipher the specification to determine prosecution disclaimer or whether there was “possession” of the full scope of the claimed subject matter through exemplary support and other bells and whistles of what has become the most complex claim construction regime in the world.
TC
Kamakhya Srivastava
Hi Kamakhya,
Thanks for the reminder 🙂 I decided to do a bit more of reading before i came up with another post because there are tons and tons of articles on this area and I would probably stand the danger of sounding repetitive if I did not add my insights to the topic. Also, quite a few of our readers have asked for concrete examples to understand the application of the principles better. I am in the process of writing a post using a live Indian example and have sought inputs from senior members and those from the relevant field. This should be up on the blog soon. But I thank you for bringing this article to my notice, I shall certainly read it, more so when it has been authored by Hal Wegner.
Best Regards,
J.Sai Deepak.