Posts Tagged “claim construction”

I was recently proofreading a document for one of my daughters  – in a technical field outside my expertise. In one sense that made it easier – I didn’t have to make a judgement about whether her positions were correct. On the other hand, since some of the sentences were phased as “terms of art” and some of the words had specialized meaning in the argot of her field, I was occasionally left scratching my head. Of course, all I had to do was highlight it and let my daughter decide if it was okay. When it comes to writing patent specifications and claims, perhaps we need to define what argot means!

What a word or phrase means in a patent specification or claim can also be of critical importance to a patent applicant or patent owner. There are two related rules about word meanings: the inventor can be his own lexicographer and words are generally assumed to have their ordinary dictionary meanings. And the meaning of a word in a claim can make all the difference between infringement and non-infringement. During an infringement suit, ultimately it is the judge, during claim construction, who ultimately decides what the word means.

The other time word meanings are argued is during examination, when you are getting your claims allowed. Karen Hazzah, in a recent blog post, discusses the value of having contemporaneous dictionary definitions for important terms in your claims. That is, when you present a dictionary definition (or, maybe, an on-line definition from a web site) it is important to show that the definition existed on or before your filing date.

Karen is most interested in how the Board of Patent Appeals (the board that adjudicates disagreements between the applicant and the examiner) operates, so her examples are from that Board’s rulings… but when you make your case on claim construction to a judge, similar principles are likely to prevail. Karen points out a couple of rulings to make her point:

[The Applicant’s] citation lacks a date to ensure that it reflects knowledge as of the time of their invention.
Ex parte Hyland, BPAI 2011.

However, both the Examiner and Appellants failed to provide corresponding dates indicating that such definitions come from dictionaries that precede the effective filing data of the present patent application. We therefore decline to adopt the respective dictionary definitions offered by the Examiner and Appellants.
Ex parte Raith, BPAI 2012. See also Ex parte Hicks, BPAI 2011 and Ex parte Moran, BPAI 2011.

What’s interesting is that the Board is equal handed, throwing out the examiner’s definition in the second ruling along with the Appellants’.

Karen’s advice, directed at Board hearings, is to make sure your definitions are dated, and dated at least contemporaneously with your filing. Of course, Board hearings are relatively soon after filing, compared to claim construction during an infringement suit. Finding a dictionary definition from, say, ten years earlier to satisfy a judge is a bigger problem.

In working with clients on their patent disclosures I try to finesse this problem by weaving potentially important definitions into the text of the specification and making sure the patent attorney uses those terms in the claims. I have seen a few other attorneys actually include a glossary in the patent specification, which may be effective but strikes me as very clumsy.

The important thing is to take advantage of your right to be your own lexicographer by including definitions of what you want a word to mean… even if the word at first seems so common as to not need a definition. The definition that is so familiar to you may be argued by an opposing attorney to be exceptional and not used by a “POSITA” (person of ordinary skill in the art). If the judge bites, your claim just got turned around. So, one way or the other, get your definition built into your specification.

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Double, double toil and trouble, infringer burn and lawyer bubble…

Although many inventors think they can save a lot of money by filing their patents pro se (for themselves), I always caution my clients to use a patent attorney, at least to draft their claims. Sure, you know the science and technology of your invention better than anyone else, but writing claims is only one part science – the rest is eye of newt, oops, I mean the rest is an art.

For example, I’ve previously blogged about a patent infringement suit in which the patentee almost lost the right to stop an infringer because their claim used the word “composed” rather than “comprised”. To the patent world, an invention “composed” of x plus y does not cover one that also includes “z”. But a patent that covers an invention “comprising” x and y can be asserted to stop someone from making x plus y plus z. [In this case the patentee won on appeal because “z” was irrelevant to the function of x plus y.]

Just recently we have another example of the arcane art of claim construction. In Baldwin v. Siebert the CAFC reversed a claims construction error of the District Court. In patent claims, it is the rule that inventions comprised of an object may equally well have two or more of the objects. Thus, Baldwin’s claimed printing press cleaning system, which comprised “a pre-soaked fabric roll”, did indeed block Siebert from selling a system that had more than one pre-soaked fabric rolls. As the CAFC said:

That “a” or “an” can mean “one or more” is best described as a rule, rather than merely as a presumption or even a convention. The exceptions to this rule are extremely limited: a patentee must “evince[ ] a clear intent” to limit “a” or “an” to “one”.

A patent attorney friend of mine suggested viewing the rule this way: if the invention is defined to include one of these objects, then a copy that includes two must, by definition, also be said to include one. You can’t have a second if you don’t have a first!

The point, of course, is not to tell you to always use comprise or to add a dependent claim adding the second or more duplicate objects. The lesson to be learned is to always seek experienced counsel to draft your claims. You’re a scientist or engineer, you never served a claim writing apprenticeship with a master artisan. Find someone who has learned this art.

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