Chemistry Reference
In-Depth Information
conversation of what the terms in a patent claim mean and the scope of the invention the
claims de
s perspective, a
patent applicant always has the opportunity to amend the claims and broad interpretation
by the examiner reduces the possibility that the claim, once issued in a patent, will be
interpreted more broadly than is justi
ne. From the U.S. Patent and Trademark Of
ce (USPTO)
'
ed ([1], § 2111).
In litigation, analysis of patent infringement involves two steps: (1) interpreting the
claims and (2) determining whether the accused object or process is covered by the
claims as interpreted.
12
The interpretation of a patent claim, known as
“
claim construc-
tion,
is a question of law for the court (the judge) to decide, not one of fact for the jury to
decide.
13
In litigation, claim language is to be interpreted as one reasonably skilled in the
art would have interpreted the claim at the time of invention.
14
The importance of
carefully and wisely choosing the language to describe and claim the invention cannot be
overemphasized. For the patentee, the time to do that really only exists when the patent
application is being prepared. During claim construction, the actual words of a patent
claim are to be given their ordinary and usual meaning unless it is apparent from the
patent disclosure that the inventor intended to de
”
ne those words differently from their
ordinary meaning.
15
An inventor may be his/her own lexicographer, de
ne his/her own
terms, but if he/she does those terms will be construed according to that de
nition.
16
When drafting a patent application and preparing claims to an amorphous solid
dispersion, an inventor might not be satis
ed with the ordinary and customary meanings
of important claim terms such as
“
amorphous
”
or
“
amorphous solid dispersion.
”
The
inventor may want to de
ne such terms in a particular way to particularly point out and
distinctly claim the invention. For example, as discussed below, there is some debate on
just what an amorphous solid is
—
when is there suf
cient order in the solid such that it is
no longer amorphous. It may be dif
nition of
amorphous depends upon determining the degree of ordering within the solid. In
contrast, where an analytical technique is used to show the amorphous nature of the
solid, de
cult to prove infringement where the de
ning
“
amorphous
”
or
“
amorphous solid dispersion
”
with reference to that
technique takes the de
nition of
“
amorphous
”
from the theoretical to the measurable.
12
Omega Eng
g, Inc. v. Raytek Corp
., 334 F.3d 1314 (Fed. Cir. 2003);
Fromson v. Advance Offset Plate, Inc
.,
720 F.2d 1565 (Fed. Cir. 1983).
13
Markman v. Westview Instruments, Inc
., 517 U.S. 370, 384 (1996);
Gechter v. Davidson
, 116 F.3d 1454,
1457 (Fed. Cir. 1997);
Vitronics Corp. v. Conceptronic, Inc
., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
14
Specialty Composites v. Cabot Corp
., 845 F.2d 981, 986 (Fed. Cir. 1988) (quoting
Loctite Corp. v. Ultraseal
Ltd
., 781 F.2d 861, 867 (Fed. Cir. 1985)).
15
O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., Ltd
., 521 F3d 1351, 1360 (Fed. Cir. 2008) (ordinary and
customary meaning is “the meaning a term would have to a person of ordinary skill in the art after reviewing the
intrinsic record at the time of the invention”).
16
See, for example,
Phillips v. AWH Corp
., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (
en banc
) (where “the
specication may reveal a special definition given to a claim term by the patentee that differs from the meaning it
would otherwise possess. . . . the inventor's lexicography governs”);
Thorner v. Sony Computer Entertainment
America LLC
, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (“To act as its own lexicographer, a patentee must 'clearly
set forth a definition of the disputed claim term' other than its plain and ordinary meaning”) (quoting
CCS
Fitness, Inc. v. Brunswick Corp
., 288 F.3d 1359, 1366 (Fed. Cir. 2002)).
'
