Patents V Claim Construction

1
Patents VClaim Construction

• Class Notes March 7, 2003
• Law 507 Intellectual Property Spring 2003
• Professor Wagner

2
Todays Agenda

• Clean Up Obviousness New Technologies
• Claim Construction
• Allocation of Authority (Who Decides?)
• Interpretive Procedure (How?)

3
Nonobviousness Challenge 3 Software/Business
Models

• Why do software and business model patents offer
  a challenge?
• How should the courts deal with this?
• Lockwood v. American Airlines (1997)
• Do you agree with the court that the lack of
  detail about the software component was fatal?
• What does this suggest about software patents?

4
Challenge 3 Software/Business Models

• Amazon.com v Barnesandnoble.com (2001)
• Note the procedural posture.
• What do you think the court suggests about the
  validity of the one-click patent?
• What does the courts analysis suggest about
  software/business method/Internet patents more
  generally?
• Is there a problem here?

5
The Centrality of Claim Construction
The Name of the Game is the Claims (Judge Rich,
1990)
6
What Does Claim Construction Look Like?

• The claim at Issue in Markman v Westview Inst
• 1. An inventory control and reporting system,
  comprising
• a data input device
• a data processor including means to maintain an
  inventory total
• a dot matrix printer and,
• at least one optical scanner ,
• whereby said system can detect and localize
  spurious additions to inventory as well as
  spurious deletions therefrom.
• What does inventory mean?
• Receivables (Westview system)
• Clothing
• Receivables Clothing

7
Who Does Claim Construction?

• Markman (USSC 1996)
• Note the Courts description of claim
  construction a mongrel practice
• Traditional analysis of judge/jury issues
• Is there a 7th Amendment guarantee of a jury
  trial?
• Does precedent command the allocation of
  responsibility?
• Are there functional reasons to allocate
  responsibility?
• Consider the Courts functional analysis
• Judges are more skilled at construing written
  documents
• Uniformity will be better served by the treatment
  of claim construction as an issue for the judge.
• How will this work? Do you agree?
• What does this imply about the Federal Circuit?

8
Claim Construction Allocation of Authority

• Consider
• The timing of claim construction
• Appellate review of claim construction
• Interlocutory appeals
• Note Cybor v FAS Techs (1998) - de novo review
• Implications of Markman/Cybor?
• 40-50 reversal rate of district court claim
  constructions

9
Interpretive ProcedureThe Johnson Worldwide
Approach

• Johnson Worldwide (Fed Cir 1999)
• invention trolling motor steering apparatus
• Key limitation
• a heading lock coupled to a trolling motor
• Issue does the heading detector have to be
  physically attached to the trolling motor?

10
The Johnson Worldwide Approach
Does coupled mean physically
attached? Interpretive Sources
11
The Johnson Worldwide Approach

• The Johnson Worldwide presumption
• Presume claim terms have their ordinary meaning
• Two circumstances can override the ordinary
  meaning
• A patentee-provided definition (lexicographer),
  or
• where the claim language is unclear.
• Johnson Worldwide attempts to reconcile two
  conflicting canons of claim interpretation
• Claims must be read as part of the specification
  (i.e., in context)
• Claims cannot be limited by reading in
  limitations from the specification

12
Dueling Approaches

• Johnson Worldwide a Procedural approach
• Strict hierarchy among information sources
• Alternative Holistic approach
• Consider entire context, totality of the
  circumstances
• Post-Markman 62 procedural, 38 holistic
  (n406)
• Judges range from 93 procedural to 85 holistic
• What does this suggest about the
• Supreme Courts decision in Markman?

13

• Next Class
• Patents VI
• Infringement the Doctrine of Equivalents