Chapter 4 Claim Construction - JurisDiction

1 6-1 Chapter 4 Claim Construction TABLE OF CONTENTS INTRODUCTION: WHAT DOES THE Claim MEAN? .. 1 HISTORY OF CLAIMING .. 2 HISTORY OF Claim Construction .. 5 The Two Part Test: Literal and Substantive Infringement .. 5 Literal Infringement .. 7 Substantive Infringement .. 9 Catnic .. 13 Improver .. 16 THE FIRST DUTY OF THE COURT .. 17 Claim Construction is the Job of the Court .. 18 Patent as a Regulation .. 20 Markman Hearings .. 20 Use of Expert Witnesses .. 21 THE PRINCIPLES OF Claim Construction IN FREE WORLD .. 27 PURPOSIVE Construction .. 30 Rejection of Form and Substance Approach .. 32 STEP 1: WHAT DO THE WORDS AND PHRASES IN THE Claim MEAN?

2 33 Pre- Construction Set-Up .. 34 The Relevant Date .. 35 The Skilled Reader .. 36 Objective Attitude or Biased for Really Useful Inventions .. 38 With an Eye on the Defendant s Product .. 39 Use of the Patent Specification .. 41 6-2 The Patent Should be Read as a Whole .. 41 Use of the Abstract .. 42 Use of the Preamble to the Claim .. 42 Use of the Disclosure and Drawings .. 43 Patentee as Lexicographer .. 48 Use of the Variance Clause .. 48 Dependant Claims, Claim Differentiation and Claim Consistency .. 49 Other Independent 53 Comprising or Consisting of .. 54 Dependent Claims: .. any of Claims .. 57 Method Claims: Order of Steps.

3 58 Use of External Material .. 58 Dictionaries .. 59 File Wrapper Estoppel .. 60 Prior Art .. 63 Other Canadian Decisions Construing the Same Patent .. 63 Foreign Decisions and Issue Estoppel .. 64 Use of Language: Synecdoche or Metonymy .. 66 Examples of Synecdoche and 68 STEP 2: IS A Claim ELEMENT ESSENTIAL ? .. 71 A Purposive Construction of Free World .. 73 Q. #1: The Obviously Superfluous Claim Element .. 74 The Presence of a Variant .. 75 Does the Variant Affect the Way the Invention Works? .. 76 a) The Way the Invention Works .. 76 b) The Way (the Invention + the Variant) Works .. 77 Obvious Substitutability .. At the Time the Patent was Published.

4 78 a) At the Time the Patent Application is Published .. 79 Q. #2: Is the Element Essential, According to the Intent of the Inventor as Expressed or Inferred from the Claims? .. 80 Adherence to the Language of the Claims .. 82 The Inferred Intent of the Inventor .. 84 6-3 Most Claims Contain Only Essential Elements .. 85 Words of Precision and the Precision of Words .. 88 Numbers .. 89 About .. 89 Irrespective of its Practical Effect .. 90 An Inconsistency in Free World .. 91 DEVELOPMENTS IN Claim Construction SINCE FREE WORLD AND WHIRLPOOL .. 96 Subsequent Case Law .. 96 Back to Improver .. 97 The Kirin-Amgen Decision .. 99 SWISS TYPE CLAIMS.

5 103 CONCLUSIONS .. 104 APPENDIX A .. 105 6-4 2007-2015 Donald M. Cameron The author wishes to express his appreciation to George Locke, Daniel Artola and Donald MacOdrum for their thoughtful suggestions in reviewing this Chapter and to Prosenjit Lahiry, Graham McNeil, Amy Grenon, Glenn Hines, Kathrine Smirl, Aftab Khan, Noelle Engle-Hardy and Michael Burgess for their assistance in researching the law. 6-1 EXECUTIVE SUMMARY: The question to be asked in construing a Claim of a patent is: What would the Claim have meant to a skilled reader as of the relevant date? ( Chapter ). Claim Construction consists of the following: 1) Read the patent as a whole, and construe the claims in the context of the patent ( Chapter ).

6 2) If the disclosure expressly defines certain terms to have certain meanings, use those definitions when interpreting the claims ( Chapter (a)). 3) The relevant date for construing the patent claims is either: a) The date of issuance of the patent, for patents applied for before October 1, 1989; or b) the date of publication of the patent application, for patents applied for on or after October 1, 1989 ( Chapter ). 4) Read the patent as if you were the person to whom it was addressed. Except for terms expressly defined in the patent, give the terms in the Claim the ordinary meaning they would have had to such person as of the relevant date ( Chapter ).

7 5) To determine whether a Claim element is essential or not, ask ( Chapter ): 1) Was it obvious to the skilled reader at the time the patent was published that a variant of a particular element would not make a difference to the way in which the invention works? If modifying or omitting the element changes the way the invention works, and that was obvious at the relevant date, then the element is essential; ( Chapter ) or 2) According to the intent of the inventor, expressed or inferred from the claims, was a particular element essential irrespective of its practical effect? If the element appears to have been intended to be essential, then the element is essential ( Chapter ).

8 If the Claim element was not found to be essential under either Q1 or Q2, then the element is non-essential ( Chapter ). 6-1 INTRODUCTION: WHAT DOES THE Claim MEAN? Patents, and the lawsuits that result from them, have been described by embittered litigants as .. a world where men substitute words for realities and then talk about the words 1 and by judges as a forum where lawyers engage in .. the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge. 2 Whatever the case, the meaning given to a patent Claim can be critical to the outcome of a patent lawsuit. When a patent Claim s validity is at issue, the patent owner may want the Claim to be construed narrowly, so it does not include a certain piece of prior art that would render the Claim invalid as claiming something that is not new.

9 When infringement of the Claim is at stake, the patent owner may want the Claim to be construed broadly so as to encompass the defence t s product or Claim Construction is the term used to describe the process of construing the claims of a patent to give them meaning, which meaning is then compared to an allegedly infringing device or method to determine infringement or to prior art to determine validity. As will be seen in Chapter 7, there is no infringement if an essential element is missing or modified in an allegedly infringing product or method. There may still be infringement if non-essential elements are substituted or The task of Claim Construction is to answer the question: What does the Claim mean?

10 Purposive Construction is essentially a contextual exercise with a primary focus on the language of the claims as viewed objectively by the notional person of The Supreme Court of Canada has phrased the question as inventor-centric: What was the inventor intending to cover by the claims? 1 It is a long time since I have attended a gathering of the scientific world a world in which I am at home one in which men deal with realities and where truth is, in fact, the goal. For the past ten years I have been in exile from this world and an explorer in another a world where men substitute words for realities and then talk about the words.