When drafting patent claims for a device, it is often desirable to describe the device based on how it works instead of how it is structured. Describing a device based on how it works is often referred to as “functional claiming.” Claims that make use of functional claiming are frequently broader in scope than those…
Read MoreClaim Construction
The claims of a U.S. Patent define the scope of the patent holder’s right to exclude. In its 1996 Markman decision, the U.S. Supreme Court held that disputes over the meaning of claim terms are an issue of law to be decided by a judge, not by a jury. A substantial percentage of patent verdicts are appealed…
Read MoreIn last month’s blog, we discussed the Federal Circuit’s decision in X2Y Attenuators, LLC. V. International Trade Commission, a case which demonstrated how limiting descriptions of an invention in a patent specification can be used to restrict the scope of otherwise facially broad claims. This month, in ScriptPro, LLC v. Innovation Associates, Inc.,the Federal Circuit…
Read MoreOn July 7, 2014, the Federal Circuit Court of Appeals issued an opinion in X2Y Attenuators, LLC v. International Trade Commission, which underscores the importance of carefully drafting patent applications with an eye toward litigation. The decision also demonstrates why form often dominates over substance in patent litigation. A copy of the opinion can be…
Read MorePros and Cons of Apparatus and Method of Use Claims Devices or apparatuses can often be protected by using two kinds of patent claims: apparatus and method of use claims. Each approach has its benefits and drawbacks. In general, apparatus claims expand the class of direct infringers relative to method of use claims but are…
Read MoreThere has been a lot of discussion in the patent world recently about how to improve patent quality. Much of this discussion has been motivated or at least strongly influenced by the surge in patent litigation brought by “patent trolls.” As we discussed last month, Congress is attempting to reduce the leverage that patent trolls enjoy…
Read MoreClients are often surprised and perplexed at the breadth of patent claims their competitors obtain because they seem to go well beyond the descriptions and examples in their patents. In our experience, patent lawsuits typically involve situations where the accused product is not specifically described in the specification of the asserted patent yet the patent…
Read MoreWhen I talk to lawyers who do not practice patent law, they often speak of the complexity of patent cases in terms of the scientific or technological issues involved. What many of them fail to understand is that quite apart from the technology, the law itself is very complex. Lawyers and judges often have difficulty…
Read MoreThis post may be helpful to those of you who litigate patent cases. While it is true that the most significant sources of claim construction evidence are the claim language, specification, and file history, courts often consider reliable sources of extrinsic evidence such as technical dictionaries and glossaries. In Phillips the Federal Circuit held that…
Read MoreStorytelling is the key persuasive device used to win lawsuits. Early in any case, good litigators begin to develop a compelling narrative with themes that support the outcome they seek for their clients. Patent cases are no different, at least when they get to trial. Before that happens, however, courts must construe the patent claims. …
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