Claim Interpretation

Claim Interpretation By: Michael A. Leonard II and Jared T. Olson

Overview • Claim interpretation is the process of assigning meaning to claim terms • Different standards for claim interpretation are used during patent prosecution and patent litigation

Patent Prosecution Standard • During patent examination, claims must be given: • Their broadest reasonable interpretation; • In light of the specification; • As it (the specification) would be understood by one of ordinary skill in the art • (See MPEP § 2111)

Claim Limitations not Imported from Specification • Limitations discussed in the specification but not recited in the claims are not imported into the claim during patent prosecution • For instance, a particular embodiment in the specification may not be imported into the claim when the claim language is broader than the embodiment • (See MPEP § 2111.01(II))

Plain Meaning • The words of a claim must be given their “plain meaning” unless the plain meaning is inconsistent with the specification • The plain meaning is the ordinary and customary meaning that would be given to the term by one of ordinary skill in the art, if such a meaning exists • The ordinary and customary meaning of a term may be evidenced by a variety of sources, including “the words of the claims themselves, 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” (Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005)) • “Intrinsic” evidence arises from the application and prosecution history while “extrinsic” evidence is from external sources • If extrinsic sources evidence more than one definition for a term, the intrinsic record must be consulted to choose the best meaning • (See MPEP § 2111.01(I) and 2111.01(III))

Applicant may be His or Her Own Lexicographer • While claim terms are normally given their ordinary and customary (or plain) meaning, an Applicant may define a claim term in the specification • When terms are defined in this manner, the Applicant is said to be acting as his or her own lexicographer • A definition provided by the Applicant overrides the plain meaning of a term • Where a term is defined, the Applicant must define the term with “reasonable clarity, deliberateness and precision” and the uncommon definition must be set out in a manner in the disclosure so that a person of ordinary skill in the art would have notice of the change in meaning (see In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994)) • (See MPEP § 2111.01(IV))

Preambles may be Non-Limiting • While the claim body will generally be held to be limiting, the preamble of a claim may not be • The determination of whether a preamble limits a claim is made on a case-by-case basis in light of the facts in each case, and there is no “litmus test” defining when the preamble limits the scope of the claim • “If the claim preamble, when read in the context of the entire claim, recites limitations of the claim, or, if the preamble is ‘necessary to give life, meaning, and vitality’ to the claim, then the claim preamble should be construed as if in the balance of the claim” (Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999) • However, any terminology in the preamble that limits the structure of the claimed invention must be treated as a claim limitation • A preamble that only recites the purpose or intended use of the claimed invention is not considered to be a limitation • In practice, rather than worrying about whether a preamble is or is not limiting, Examiners often treat the preamble as limiting and reject the features thereof based on art, even for functional recitations • (See MPEP § 2111.02, 2111.02(I) and 2111.02(II))

Transitional Phrases • The transitional phrases “comprising,” “consisting of,” and “consisting essentally of” define the scope of the claim with respect to what unrecited additional components or steps are excluded from the scope of the claim • “Comprising,” synonymous with “including,” “containing,” or “characterized by,” is open-ended and does not exclude additional, unrecited elements or method steps; accordingly, “comprising” is usually preferred • “Consisting of” excludes any element or step not specified in the claim • “Consisting essentially of” limits the scope of a claim to the specified materials or steps and those that do not materially affect the basic and novel characteristics of the claimed invention (typically seen in compositions) • (See MPEP § 2111.03)

“Adapted to,” “Adapted for,” “Wherein” and “Whereby” Clauses • These clauses may raise a question as to whether claim language following them is limiting • Such a determination depends on the specific facts of the case and while not automatically non-limiting, Applicants may wish to consider using different language, such as “configured to” • (See MPEP § 2111.04)

Patent Litigation Standard • Claims of issued patents are interpreted in light of the specification, prosecution history, prior art and other claims • Both extrinsic evidence and intrinsic evidence may be considered • Large patent infringement cases often turn on the meaning of a single word in a claim

Phillips v. AWH Corp. • Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) provided a comprehensive discussion regarding claim construction • Phillips reiterated that claims are to be given their ordinary and customary meaning, which is the meaning the term would have to a person of ordinary skill in the art at the time the invention was made • The person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the term appears, but in the context of the entire patent, including the specification

Not all Claim Terms have Special Meaning in the Art • In some cases, the ordinary meaning of a term is apparent even to laypeople since the term requires little more than the application of a widely accepted meaning of commonly understood words • General purpose dictionaries may be helpful to provide the definition in such cases

Terms not Having Readily Apparent Meaning • Where the meaning of a claim term is not readily apparent, however, a court may consult a variety of sources: • Intrinsic evidence (claim language, specification, prosecution history); and • Extrinsic evidence (relevant scientific principles, meaning of technical terms, and state of the art)

Claim Language • Claim language may inform the meaning of a claim term through one or more of the following: • The context of the claim in which the term appears; • The usage in other claims having the same term; and • The doctrine of claim differentiation, which looks at the relative scope of each claim in relation to others

The Specification • The specification is considered by the CAFC to be the single best guide to claim meaning by the CAFC because its job is to describe the claimed invention in full, clear, concise and exact terms • Further, the specification may indicate that an Applicant was acting as his or her own lexicographer • Thus, it is appropriate for a reviewing court to rely heavily on the specification to determine claim meaning

Prosecution History • The prosecution history should also be consulted • However, the prosecution history is considered to be less useful than the specification since it represents an ongoing negotiation between the patentee and the USPTO and tends to lack the clarity of the specification • Nonetheless, the prosecution history may show how the inventor understood the invention and whether the scope of the invention was limited in order to obtain an allowance

Extrinsic Evidence is Less Significant • Extrinsic evidence is less significant than intrinsic evidence with respect to claim construction • Some of the reasons extrinsic evidence is considered less reliable include: • It is not part of the patent and, unlike the application, was not created at the time of patent prosecution for explaining the patent’s scope and meaning; • It may not truly reflect the understanding of those skilled in the art; • It may suffer from litigation-based bias; • It is prone to selective use for advocacy purposes; and • If unduly relied upon, it may change the meaning that is otherwise indicated by the intrinsic evidence • Nonetheless, extrinsic evidence may be helpful in claim construction where it is not at odds with intrinsic evidence

Markman Hearings • A Markman hearing is a pretrial hearing in the U.S. Federal District Court where a judge examines evidence from the parties regarding the purported meaning of claim terms • These hearings are named after the Supreme Court case Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996) • A Markman hearing may consider both intrinsic and extrinsic evidence, but must adhere to the principles enunciated in Phillips, as discussed above

Conclusion • Patent prosecution and patent litigation use different standards with respect to claim interpretation • It is helpful to be aware of both standards when drafting and prosecuting patent applications to understand the position that the Examiner should take, as well as to try to give claim terms the best meaning possible for potential future litigation

Claim Interpretation