Issue 122 | October 15, 2003
Markman Hearings:
If You Missed Our Roundtable
 Full audio discussion together with PowerPoint support on http://www.aplf.org/events/roundtables/2003-09-24.shtml.

  • Early Markman Hearings and resultant claim construction orders are becoming the norm and taking on increased significance in patent cases.

  • Technology Tutorials are also becoming more popular, and are an excellent opportunity to covertly lay the foundation for your substantive arguments.

  • Investing enough effort into these two events is critical to the success of a patent case.

  • Recently, the Federal Circuit has focused more on a "heavy presumption" that the "ordinary meaning" of patent claim terms is correct

  • It is possible to derive the "ordinary meaning" from the terms themselves, or from objective evidence such as dictionaries or treatises

  • Look to the patent specification not to define claim terms in the first instance, but to see whether the specification includes meanings which overcome the "heavy presumption" (inventor as lexicographer)

  • There are two distinct ways of determining the scope of a claim: the court can look at the invention or it can look at the words used to describe the invention.

  • The preferred approach is to look at the words, at least in the first instance, to determine the scope. The public notice function of a patent is best served in this way.

  • However, the court often will use the file history to look at the invention as a 'reality check' to assure that the claim scope based on the claim language is not too far out of kilter with the actual invention.

  • Recent Federal Circuit decisions underscore the importance of expert testimony and other extrinsic evidence in patent claim construction.

  • Extrinsic evidence can set the stage for a preferred interpretation based on the patent's intrinsic evidence (the claims, specification and prosecution history), or may provide critical evidence for that interpretation.

  • Extrinsic evidence also should be considered in patent drafting and prosecution, as well as in opinions of counsel.

Phil Petti - Fitch, Even, Tabin & Flannery
Bradford Lyerla - Marshall Gerstein & Borun
John Rabena - Sughrue Mion
Frank Bernstein - Sughrue Mion

The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.