Tell Me a Story About Claim Construction
“Create a narrative from the intrinsic evidence by using the claim terms in a manner that is consistent with your constructions and inconsistent with your opponent’s constructions”Storytelling 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. It is now standard to have claim construction briefing and Markman hearings in patent cases. However, the law of claim construction often leads litigators to develop briefs that lack storytelling or compelling narratives. Thus, key persuasive opportunities are missed.
If you haven’t read a claim construction brief lately, they tend to be incredibly dry. Typical briefs often include a laundry list of string citations to the governing case law followed by the proposed constructions and supporting arguments. They often have little human interest and are dry and devoid of any of the context that gave rise to the definitional disputes they seek to resolve. Part of the difficulty is that the courts focus (often exclusively) on the intrinsic evidence of claim meaning—the patent and prosecution history— and this evidence does not include the parties’ respective stories and themes that brought them to court in the first place. At first blush, it can be difficult to conceive of any kind of narrative when the universe of available information is so limited. What you end up with in many claim construction briefs is a series of disconnected arguments over claim definitions with no storyline holding them together.
However, claim construction briefs can be improved. There is often a story to be told based on the intrinsic evidence. It can be included in a background or statement of facts section in the brief. The patent and the prosecution history can be used to put together a narrative that fits each party’s claim construction theories. The result is a far more compelling and persuasive brief.
In the typical patent case, each party has a different way of viewing and interpreting the intrinsic evidence. As an advocate, you want the court to interpret the intrinsic evidence in the same way you do. Of course, this can be presented as argument wherein competing constructions are compared and contrasted. However, a narrative that supports those arguments is a powerful persuasive tool.
They key is to build a narrative that supports your position. In other words: Create a narrative from the intrinsic evidence by using the claim terms in a manner that is consistent with your constructions and inconsistent with your opponent’s constructions. This will leave the reader with the feeling that your constructions are right simply be reading your story.
Here are some thoughts about how to build a compelling story that you can link to your claim construction positions.
The Patent Holder’s Story
The patent holder has the advantage of having the story of the invention to tell. Ideally, the story should not rely on extensive evidence outside of the patent itself. The story should also provide some context for the claim terms in dispute and set up the positions that the patent holder will take. Explain the purpose and function of the embodiments in the patent by using disputed claim language in a way that supports your theory. Similarly, if the file history includes significant amendments or arguments, explain how and why the amendments or arguments were made in a way that supports your theory.
For example, in Phillips v. AWH, 315 F.3d 1303 (Fed. Cir. 2005), the Federal Circuit addressed the construction of the word “baffles” in U.S. Patent No. 4,677,798. The parties’ dispute concerned whether the term “baffles” as used in the patent was limited to structures oriented non-orthogonally to steel shell walls between which the baffles were placed. The patent holder said the term was not so limited, while the defendant said that it was.
The defendant hinged its limiting construction on several portions of the specification that focused on using the baffles to deflect bullets, in which case an orthogonal orientation would not be helpful. However, the patent provides the patent holder with a story to tell that suggests “baffles” should not be limited in this sense. In particular, the specification discusses modular building techniques and their use to erect structures quickly. It also describes the baffles as “internally directed load bearing baffles.” Thus, the patent holder’s story is one in which baffles are a load bearing structure used in a modular building technique to allow facilities to be quickly constructed. In contrast, the orientation of the baffles can be described as an additional feature or refinement that was developed to solve a further, specific problem: deflecting bullets.
More importantly, the patent holder can build its story in a way that lays the evidentiary foundation for its construction, or in this example, for the broader construction of “baffles.” For example, in Phillips the Federal Circuit relied on the fact that the dependent claims limited the orientation of the baffles in holding that the orientation was not what defined the term “baffle.” The patent holder can make use of such helpful facts in its story, e.g.:
The inventor’s load bearing baffles could also be advantageously used to deflect bullets by orienting them non-orthogonally to the steel shell walls of the claimed modules. Thus, the patent’s dependent claims, such as claims 2 and 6 further specify the manner in which the baffles are oriented.
This type of description distinguishes “baffles” from their orientation by describing the orientation as an optional and variable feature. This characterization of the patent was critical to the patent holder’s argument in Phillips. Here, you are not providing arguments or discussing the canons of claim construction. You are just telling a story. However, the story you are telling is one in which the claim terms necessarily have the meaning you seek to ascribe to them. If the court starts thinking of the terms in the same way, your chances of prevailing will correspondingly increase.
The prosecution history can be used in the same way. Often claim amendments and arguments can be explained and understood in multiple ways. Construct a narrative about what the prior art says and how the claims were amended to distinguish it that supports your constructions. Accused infringers will focus on the one aspect of the prior art that most closely relates to the claim term at issue and argue that the term must be construed to be different from the corresponding feature in the prior art. However, if the claims in suit have multiple features, arguments that distinguish the prior art can be understood as focusing on features other than the disputed term or as arguing that the combination of claimed features overall distinguishes the prior art. For example, in Phillips the prior art disclosed baffles oriented at 90 degrees. Depending on how they were articulated, arguments distinguishing such prior art could be understood as bearing on the meaning of “baffles” or as merely distinguishing the combination of claim elements from references that include “baffles”, regardless of the term’s meaning.
The Accused Infringer’s Story
The accused infringer also has a story to tell based on the intrinsic record. The problem the invention was intended to solve and the embodiments can be characterized in a way that supports the accused infringer’s constructions.
Looking again at the Phillips case, the accused infringer would characterize the invention as one that was specifically targeted toward secure modular facilities that would withstand gunfire. The Federal Circuit pointed out that the specification was replete with references to the fact that bullet deflection was important. The accused infringer’s narrative would use the term “baffles” in a way that suggests it inherently and necessarily includes a non-orthogonal orientation. The following is but one possible example:
The Phillips patent is directed to modular building techniques for secure facilities that can withstand gun fire. One of the features necessary to achieve that goal is a series of angled structural members called “baffles.” By providing these members, the disclosed structures prevent bullets from being able to pass through the steel shell walls between which the baffles are placed.
The prior art asserted in the file history can also be described in a way that supports the accused infringer’s constructions. For example, the prior art in Phillips could be characterized as providing orthogonal supporting members between steel walls. This could be explained by stating that “the prior art provided orthogonal load bearing structures to provide sufficient support for previous modular units. However, the inventor of the patent in suit changed the orientation of these structures to create baffles, and thereby add the benefit of bullet deflection which is critical in jails and other secured facilities.” This is but one possible example.
Good storytelling and a compelling narrative are key components of a successful litigation strategy. Given the central role that claim construction plays in most patent cases, it behooves litigants to develop a narrative of the patent and prosecution history which supports its case.