Claims as Pointers: The Statutory Approach to Claim Construction

Journal of Intellectual Property Law Volume 12 | Issue 2 Article 5 April 2005 Claims as Pointers: The Statutory Approach to Claim Construction Joseph Mueller Boston College Law School Follow this and additional works at: https://digitalcommons.law.uga.edu/jipl Part of the Intellectual Property Law Commons Recommended Citation Joseph Mueller, Claims as Pointers: The Statutory Approach to Claim Construction, 12 J. Intell. Prop. L. 501 (2005). Available at: https://digitalcommons.law.uga.edu/jipl/vol12/iss2/5 This Essay is brought to you for free and open access by Digital Commons @ Georgia Law. It has been accepted for inclusion in Journal of Intellectual Property Law by an authorized editor of Digital Commons @ Georgia Law. Please share how you have benefited from this access For more information, please contact . Mueller: Claims as Pointers: The Statutory Approach to Claim Construction CLAIMS AS POINTERS: THE STATUTORY APPROACH TO CLAIM CONSTRUCTION Joseph Mueller* I. INTRODUCTION The United States Court of Appeals for the Federal Circuit, recognizing the dissonance in the case law on claim construction, has taken en banc the case of Phillips v. AWH Corp.' The en banc order in Phillips suggests that the Federal Circuit intends to address the flashpoint for conflict in the case law on claim construction: the relative priority of the possible sources for claim meaning, and in particular the relative priority of the patent's written description as against extrinsic sources such as dictionaries.2 Those Federal Circuit cases that have attempted to probe this important question have usually focused on earlier decisions issued by the Federal Circuit and other courts. Two axioms run through these cases: first, claims must be read in light of the specification, and second, it is improper to import limitations from the specification into the claims,' These two axioms regularly conflict, as defining a claim in light of the specification (as urged by the first axiom) can be substantively identical to importing a limitation from the specification (as prohibited by the second axiom). Attempts at reconciling these twin axioms have not succeeded, as shown by the decision to take Phillpsen banc. While considerable attention has been paid to the case law and its conflicting axioms, little attention has been given to the statutory text itself, which ironically * Associate at Wilmer Cutler Pickering Hale and Dort LLP, adjunct professor of law at Boston College Law School, and former law clerk to judge Patti B. Saris of the United States District Court for the District of Massachusetts and to judge Paul R. Michel of the United States Court of Appeals for the Federal Circuit. The views expressed in this Essay are the author's own. 1 376 F.3d 1382, 71 U.S.P.Q.2d (BNA) 1765 (Fed. Cir. 2004) ("This court has determined to hear this case en banc to resolve issues concerning the construction of patent claims."). 2 See id. at 1383 ("Is the public notice function of patent claims better served by referencing primarily to technical and general purpose dictionaries and similar sources to interpret a claim term or by looking primarily to the patentee's use of the term in the specification?'). 3 See, e.g., Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 904, 69 U.S.P.Q.2d (BNA) 1801, 1806 (Fed. Cir. 2004). In Liebel-Flarsheim,the Federal Circuit remarked: We have had many occasions to cite one or both of the twin axioms regarding the role of the specification in claim construction: On the one hand, claims must be read in view of the specification, of which they are a part. On the other hand, it is improper to read a limitation from the specification into the claims. Id. (internal quotation marks and citations omitted). Published by Digital Commons @ Georgia Law, 2005 1 Journal of Intellectual Property Law, Vol. 12, Iss. 2 [2005], Art. 5 J. INTELL PROP. L [Vol. 12:501 provides a simple and normatively desirable conception of claims: Claims "point out" the invention in the written description.4 This Essay discusses the mechanics of following the statutory language, and the policy benefits that would result. Because these benefits are compelling, it is hoped that in Phillips the Federal Circuit-or, on review, the Supreme Court-focuses on the Patent Act itself in determining the proper approach to claim construction. II. THE STATUTORY TEXT The Patent Act states: The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. The speificationshallconclude with one or more claimsparlicularylpointingout and distincty claiming the subject matter which the applicant regards as his invention.s The italicized language traces its lineage back to section 6 of the Patent Act of 1836, which stated: [B]efore any inventor shall receive a patent for any such new invention or discovery, he shall deliver a written description of his invention or discovery, and of the manner and process of making, constructing, using, and compounding the same, in such full, clear, and exact terms, avoiding unnecessary prolixity, as to enable any such person skilled in the art or science to which it appertains, or with which it is most nearly connected, to make, construct, compound, and use the same; and in case of any machine, he shall fully explain the principle and the several modes in which he has contemplated the application of that principle or character by which it may be distinguished from other inventions; and shallpariculary 35 U.S.C. § 112 (2000) ("The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." (emphasis added)). ' Id. (emphasis added). https://digitalcommons.law.uga.edu/jipl/vol12/iss2/5 2 Mueller: Claims as Pointers: The Statutory Approach to Claim Construction 2005] CLAIMS AS POINTERS or combination, which he claims as speifi andpointout thepart,improvement, 6 his own invention or discovey. As can be seen, both the original and the current statutory text require that the inventor point out the claimed invention. The current text makes clear that the claims themselves must do this pointing. The statutory language indicates that something is being pointed to-that is to say, that the claims are referential rather than free-standing. The natural object of this pointing is the written description, which is required by the immediately preceding sentence in the current statute.' Thus, basic grammar supports viewing the claims as pointers that refer to the written description. Indeed, Congress could have stated that claims "define" the invention, or " (...truncated)