Patent Claim Construction: SCOTUS says – Do Not Disturb!

Do Not DisturbSociety at large is becoming very familiar with patents from shows like The Shark Tank.  Investors repeatedly want to know if your new company has a product that is protected.  Meaning, can you stop someone else in the marketplace from making and selling a product like yours?  A patent does not give you the right to make your product, it gives you the right to stop others from making, using, or selling the invention claimed in your patent.  Did you notice the distinction between your product and what is claimed in the patent?

It is a bedrock principle of patent law that the claims of a patent define the invention.  Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996).  This is difficult to understand since you are claiming the boundaries of an intangible object, intellectual property.  Try this comparison.  When you purchase a piece of real property (land), the boundaries are defined by the metes and bounds of that property.  Want to know where to put a fence?  Is this your property or the city’s?  Check the survey and the metes and bounds.  That is exactly what the claims of a patent do.  They define the outer boundaries of your invention.  It is not merely a picture of your product, it is the boundary of what your invention covers.

As part of any patent litigation, the judge will construct claims that are in dispute by both parties.  Parties will often have differing interpretations of what a word or phrase in a patent claim means, which has far reaching implications to the liability of the alleged infringer.  The judge will decide at a Markman hearing what the word/phrase in the claim means and that will be the definition used by the court and potentially the jury in determining whether the other party infringed the claims of your patent.

In a recent decision, the Supreme Court of the United States held in Teva Pharmaceuticals USA, Inc., et al. v. Sandoz, Inc., et al., No. 13-854 (January 20, 2015) that when the district court uses extrinsic evidence during claim construction (information outside of the patent specification itself), the appellate court must use a “clear error” standard of review.  Extrinsic evidence could be dictionaries, experts in the industry.   If the district court only looks at the intrinsic evidence, information disclosed in the patent itself, the appellate court should continue to use a de novo standard of review.

The rationale is based on the premise that when the district court looks at evidence outside evidence for claim construction, the court is making a factual finding regarding the dispute.  Based on this factual finding, the judge is interpreting the claim term.  As a result, the appellate court must look at the factual finding under a clear error standard of review.  The Supreme Court stated that when only the information contained in the patent itself is used to determine the meaning of a patent claim term, it is a legal determination and should be reviewed under a de novo standard.

If you have any questions about the patent process, contact Mr. Popowitz below.

Greg M. Popowitz, Esq.

Registered Patent Attorney

AV Rated by Martindale-Hubbell

Intellectual Property Litigation


213 East Sheridan Street, Suite 3

Dania Beach, Florida  33004

Main: 954.929.1899

Fax: 954.922.6662


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Filed under Business Litigation, Intellectual Property, Patent Prosecution

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