Issue 05/28 | July 07, 2005
Markman Issues (2004)
 The Federal Circuit Review of Markman Issues (2004)

The Federal Circuit Review of Markman Issues (2004), with 112 pages of text, reviews the substantive and procedural law developed in the Federal Circuit during 2004 concerning patent claim construction.

The jurisprudence from 2004 was tumultuous. For example, judges on the Court do not share the same view on whether to interpret a claim term in accordance with an “ordinary meaning” or, on the other hand, a contextual (and possibly narrower) meaning indicated by the patent documents. The resulting conflict led now-Chief Judge Michel to state in one 2004 decision that the Court’s recent case law “is unfortunately complex and inconsistent.” [Astrazeneca AB v. Mutual Pharmaceutical Co., Inc. 384 F.3d 1333, 1336 (Fed. Cir. 2004)].

In another 2004 ruling, he expressed “alarm” caused by the Court’s use of imprecise statements from prior panels. [Superguide Corp. v. DirecTV, 358 F.3d 870, 898 (Fed. Cir. 2004) (concurring opinion)]

One line of reasoning favoring the “ordinary meaning” approach is that all an inventor must do according to the patent statute is set forth his best mode contemplated for practicing the invention in terms that pass muster under 35 U.S.C. §112. Following that, the inventor is allowed to claim as broadly as desired, provided that the claims are supported by disclosure and meet the “particularly pointing out and distinctly claiming” test. After all, the statute allows the inventor to claim what “the applicant regards as his invention.” Id. ¶2. Thus, having given an example of a combination of features, for example, and the PTO having approved that broad combination as patentable over the art, using the broadest reasonable interpretation of the claim language, why shouldn’t the inventor be entitled to a broad scope of protection perhaps including a heavy presumption of ordinary meaning?

Judge Newman answered, dissenting in Housey Pharmaceuticals v. Astrazeneca, [366 F.3d 1348, 1352 (Fed. Cir. 2004)] explaining that the presumption contradicts existing precedent. The general rule, she explained, is that technical terms are presumed to have the meaning of the technical field of the document, not a “general meaning.” Hence, general usages of the same word are not controlling. Rather, in her view, technical terms should take their meaning from the technology and context in which they are used. “The written description is not an also-ran in claim construction, as the panel states; it is the primary resource in understanding the claims.” [66 F.3d at 1358 (dissenting opinion).]

Hence the proper role of role of dictionaries and treatises was a battleground in 2004 (and is one subject taken up for an en banc decision in Phillips v. AWH). According to Judge Newman, the proper role “is to educate the non-technical judge in understanding what the inventor and the examiner understood, not to impose a new evidentiary presumption and not to enlarge the patented invention beyond that set forth by the inventor.”[ld.]

Other issues discussed in the report concern whether claims can be construed to exclude the preferred embodiment, the use of the written description to construe claims, whether preamble language is a claim limitation, how Section 112 applies to step-plus-function and means-plus-function claims, the standard of appellate review, the form in which district judges should report their claim constructions, whether litigants have a duty to object to jury instructions based on objections to the claim construction, estoppel issues, and many more.

To view the full document please click HERE

To discuss any issues discussed in this Review further, please feel free to contact the author of this email update Edward D. Manzo (emanzo@cammcm.com), at Cook, Alex, McFarron, Manzo, Cummings & Mehler, Ltd. in Chicago, IL, USA.

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