Construing Patent Claims According to Their "Interpretive Community": A Call for an Attorney-Plus-Artisan Perspective

Article excerpt

TABLE OF CONTENTS

I. INTRODUCTION
II. ARGUMENT FOR AN AUDIENCE-ORIENTED PERSPECTIVE
III. THE ORDINARY ARTISAN RULE IN LAW, HISTORY, AND
   PRACTICE
    A. Implicit Recognition of a Non-Artisan Audience for
         Patent Claims
     1. Courts' Actual Claim Construction Methodology
     2. Gillette's Razor: An Illustration of Claim Construction
         in Action
    B. The Origins of Patent Law's "Person of Ordinary Skill"
        Measure
    C. A Short History of Claims and Claim Construction
      1. The Slow Evolution of Modern Claims and Claim
            Interpretation
      2. Historical Alternatives to the Artisan Perspective
IV. ELIMINATING THE DISJUNCTION BETWEEN STATED RULE
   AND PRACTICE
   A. Problems with an Ordinary Artisan Perspective
   B. Undesirability of the Disjunction Between Rule and
       Practice
   C. A Hybrid Alternative to the Ordinary Artisan Rule
V. CONCLUSION

THE CONSTRUCTION OF WRITTEN INSTRUMENTS IS ONE OF THOSE THINGS THAT JUDGES OFTEN DO AND ARE LIKELY TO DO BETTER THAN JURORS UNBURDENED BY TRAINING IN EXEGESIS. PATENT CONSTRUCTION IN PARTICULAR "IS A SPECIAL OCCUPATION, REQUIRING, LIKE ALL OTHERS, SPECIAL TRAINING AND PRACTICE."

- MARKMAN V. WESTVIEW INSTRUMENTS, INC. (SOUTER, J.) (1)

I. INTRODUCTION

Determination of the scope of a patented invention is one of the most contentious and difficult tasks of modern patent law. Claims--numbered clauses at the end of a patent--are meant to provide notice of what a patent covers and to describe a patented invention in a way that distinguishes it from prior art. (2) Because of claims' centrality to determinations of patent scope and patent validity, the stakes in trying to improve the predictability of claim construction are large.

Patents play a critical role in modern business planning and finance. (3) Moreover, as with other types of intellectual property, the importance of patents appears to be increasing: (4) recently, the number of United States patents issued each year has grown faster than the real gross domestic product. (5) The pace and breadth of modern patenting has fed concerns that overlapping or fragmented patent rights may act to retard innovation rather than "promote ... Progress." (6)

The certainty with which patent scope is defined is a crucial variable in determining whether the net impact of patents is positive or negative. Relative certainty regarding a patent's scope can promote the development and dissemination of related technology by providing a sense of security both to investors in patent rights and to investors in activities that might be vulnerable to charges of patent infringement. (7) Greater certainty may also facilitate licensing that promotes efficient levels of inventive and productive activity. (8) Parties may be more likely to avoid expensive litigation and agree to licensing terms if they can first agree on a patent's scope. (9) Further, probable correlates of certainty--such as the coherence of claim construction law and the predictability of courts' constructions--are likely to make processes of construing claims, forecasting court constructions, and drafting claims that adequately cover an invention less taxing and less error-prone.

Several developments of the last few decades were intended to bring greater predictability and rationality to claim construction. In 1982, Congress created the United States Court of Appeals for the Federal Circuit, a new appellate court with exclusive jurisdiction over appeals in cases that arise under federal patent law. (10) In 1996, the Supreme Court's opinion in Markman v. Westview Instruments, Inc. (11) affirmed the Federal Circuit's holding that claim construction is a task for judges rather than juries. (12) Two years later, the Federal Circuit held that claim construction is not only a judicial task, but also a purely legal one, the entirety of which is subject to de novo review. …

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