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Claim Construction I

Claim Construction I. Class Notes: February 18, 2003 Law 677 | Patent Law | Spring 2003 Professor Wagner. Today’s Agenda. Introduction to Claim Construction Who decides? Why?. Mapping the Course. Introduction to Patents Requirements for Patent Validity Full disclosure

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Claim Construction I

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  1. Claim Construction I Class Notes: February 18, 2003 Law 677 | Patent Law | Spring 2003 Professor Wagner

  2. Today’s Agenda • Introduction to Claim Construction Who decides? Why? Law 677 | Spring 2003

  3. Mapping the Course • Introduction to Patents • Requirements for Patent Validity • Full disclosure • Avoidance of Statutory Bars • Novelty (no anticipation) • Nonobviousness • Appropriate subject matter [later] • The Rules for Patent Enforcement • Claim Construction • Infringement & the Doctrine of Equivalents • Defenses & Counterclaims Claim Construction: Crucial for All Law 677 | Spring 2003

  4. The Centrality of Claim Construction “The Name of the Game is the Claims” (Judge Rich, 1990) Law 677 | Spring 2003

  5. What Does Claim Construction Look Like? • The Claim at Issue in Markman v Westview Inst. • 1. The inventory control and reporting system, comprising; a data input device for manual operation by an attendant, . . . ; a data processor including memory operable to record said information and means to maintain an inventory total, . . . ; a dot matrix printer operable under control of the data processor to generate a written record of the indicia associated with sequential transactions, . . . and, at least one optical scanner connected to the data processor and operable to detect said bar codes on all articles passing a predetermined station, whereby said system can detect and localize spurious additions to inventory as well as spurious deletions therefrom. Law 677 | Spring 2003

  6. What Does Claim Construction Look Like? • The Claim at Issue in Markman v Westview Inst. • 1. The inventory control and reporting system, comprising; … • The Westview system: tracks receivables rather than clothing A jury found infringement, but the District Court entered JMOL, determining that inventory encompassed both receivables and articles of clothing. Why does this not infringe? What types of information would be useful? Is either the judge or jury better suited to the task? Law 677 | Spring 2003

  7. Who Does Claim Construction? • Markman v Westview Instruments (1996) Note the Court’s description: a ‘mongrel practice’ Traditional analysis of judge/jury issues: • Is there a 7th Amendment guarantee of a jury trial? • Does precedent command the allocation of responsibility? • Are there functional reasons to allocate responsibility? Consider the Court’s functional analysis: • Judges are more skilled at construing written documents • Uniformity will be better served by the treatment of claim construction as an issue for the judge. • How will this work? Do you agree? • What does this imply about the Federal Circuit? Law 677 | Spring 2003

  8. Claim Construction Issues • The timing of claim construction • Interlocutory appeals • Appellate review • Did Markman really decide the “who decides” question? (What question lingered?) • Cybor v FAS Technologies (1998) • How does Cybor effect the ‘functional considerations’ of Markman? (Is Cybor faithful to Markman?) Law 677 | Spring 2003

  9. Next Class • Claim Construction II • The Process of Claim Construction Law 677 | Spring 2003

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