Comparative Guides
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Results: 4 Answers
Patents
8.
Claim construction
8.1
When during a patent infringement action are claim terms defined by the tribunal?
 
United States
The timing of a claim construction decision is a procedural matter that is generally within the trial court’s discretion (CytoLogix Corp v Ventana Med Sys, Inc, 424 F3d 1168, 1172 (Fed Cir 2005)). Often, the court’s local rules set forth the timing and procedure for claim construction proceedings.

For more information about this answer please contact: Anthony Del Monaco from Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
8.2
What is the legal standard used to define claim terms?
 
United States
A patent claim term should generally be given its “ordinary and customary meaning” – that is, the meaning that the term would have to a person of ordinary skill in the art at the time of the invention (Phillips v AWH Corp, 415 F3d 1303, 1312-13 (Fed Cir 2005) (en banc)). The meaning of a claim term should be determined in the context of the entire patent, including the specification and the prosecution history (id. at 1313). If the specification or prosecution history clearly recites a special definition given to a claim term by the inventor, then the inventor’s lexicography governs, even if that definition differs from the term’s ordinary and customary meaning (Vitronics Corp v Conceptronic, Inc, 90 F3d 1576, 1582 (Fed Cir 1996)).

For more information about this answer please contact: Anthony Del Monaco from Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
8.3
What evidence does the tribunal consider in defining claim terms?
 
United States
The evidence considered during a claim construction proceeding can be classified into two categories: intrinsic and extrinsic. Intrinsic evidence includes the claim language, specification and prosecution history. If an analysis of the intrinsic evidence alone will remove any ambiguity in the disputed claim term’s meaning, the court should not consider any extrinsic evidence (Vitronics Corp v Conceptronic, Inc, 90 F.3d 1576, 1583 (Fed Cir 1996). Extrinsic evidence consists of all evidence external to the patent and prosecution history, and includes, for example, expert testimony and opinions and any outside sources, such as dictionaries, textbooks and articles. However, courts may rely on extrinsic evidence only so long as it does not contradict the meaning of the claim terms expressed in the intrinsic evidence (Pitney Bowes, Inc v Hewlett-Packard Co, 182 F3d 1298, 1308 (Fed Cir 1999)).

For more information about this answer please contact: Anthony Del Monaco from Finnegan, Henderson, Farabow, Garrett & Dunner, LLP