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Unpublished Paper
Construing Patent Claims in Light of the Specification Versus Importing Claim Limitations from the Specification: Is There any Difference?
ExpressO (2009)
  • Robbie R Harmer
Abstract
Patent litigation often turns on the meaning of words in patent claims. Though litigants, licensees, assignees, and examiners at the U.S. Patent and Trademark Office (PTO) all must interpret, or construe, patent claims at some point in the lifetime of a patent, judges have the final say as to the scope and meaning of the words in patent claims. Judges’ interpretive methodologies raise questions about the relationship between the claims and the specification. The Federal Circuit, having exclusive appellate jurisdiction over patents, has established that courts should construe patent claims “in light of” the patent specification. On the other hand, a cardinal rule of patent law forbids importing limitations from the specification into patent claims. The problem is that construing claims in light of the specification often inherently involves limiting the scope of the claims from the substance within the specification. As one can imagine, courts have struggled to reconcile these conflicting demands. This struggle has lead to uncertainty and instability in patent law. The ongoing presence of forum shopping in plaintiff-friendly districts, such as the Eastern District of Texas, and the Federal Circuit’s abnormally high reversal rates suggest that the patent system needs more uniformity and certainty. The time has come for patent law to dispense with the fictitious restriction against limiting patent claims according to the specification: courts should construe patent claims and incorporate limitations as needed in light of the specification as a whole.
Keywords
  • claim construction,
  • Phillips,
  • patent,
  • canons,
  • construing claims,
  • Federal Circuit,
  • stability,
  • certainty,
  • patent law reform,
  • importing limitations,
  • in light of the specification,
  • as a whole,
  • enablement,
  • written description,
  • reversal rate,
  • de novo standard of review
Disciplines
Publication Date
June 8, 2009
Citation Information
Robbie R Harmer. "Construing Patent Claims in Light of the Specification Versus Importing Claim Limitations from the Specification: Is There any Difference?" ExpressO (2009)
Available at: http://works.bepress.com/robbie_harmer/1/