Markman hearing early certainty and incentive to

This preview shows page 23 - 25 out of 37 pages.

Markman Hearing : Early certainty and incentive to clarify and settle(1) TIMING(a)depends on judicial discretion, each case and each judge differs(2)DISCOVERY relevance(a)usually judge permits discovery before MARKMAN(3) EXPERTS (a)dual role: tutorial and testimony (i)PHOSITA testimony from expert?c)InfringementAnalysis– 3-Stepi)Step 1 – Construe the claims (Markman hearing–Q of LAW) (a)Limited to the information in the claims, not additional from specs (i)Claim language covers embodiment in patent (sometimes else tautology)(b)Not limited to any particular type of technology- allow future patents(c)Dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim(2)Ordinary Meaning Test(a)Determined by context of PHOSITA at time of invention; (i)PHOSITA perspective addresses enlightening/re-writing dilemma(b)Intrinsic evidence– Claim, Specification, Prosecution History, (i)Specification is the best guide (Phillips)(ii)If still ambiguous, then less reliable Extrinsic– Experts, dictionaries, etc.1.Disagreement of evidences let more reliable win(iii)Canons of Claim Construction (CONTEXT MATTERS MOST)1.Weight of Evidence: Intrinsic > Extrinsici.Intrinsic evidence – Claims, Specification, File wrapper (Prosecution history)ii.Extrinsic evidence – Experts, dictionaries, etc.2.Cryptic Termsa.Inferences from dependent and independent claims b.If a term is ambiguous, choose the interpretation that preserves validityc.Specific terms mean the same thing throughout the patent (Phillips)d.Patentee is free to be her own lexicographer(Kopykake– “photocopy machine” includes separate combination of scanner and printer in specification)i.Allowed to use dictionaries3.All words in a claim have meaning and are important – same word has same meaninga.Two claims, one specific, one general; the general claim claims more than the specific claim b.Rebuttable presumption that different words in claims mean different things4.Don’t import limitations from specifications (Phillips)23
24a.Purpose or goal of the invention (3M v. Johnson & Johnson– “Lubricant” means “slippery lubricant” because this was the improvement/purpose over prior art)b.But specification is the best source (context is only hope)(c)No Absolute Forgiveness– But cannot re-write/ re-construe clearly incorrect claim writing (i)“It is the job of the patentee, and not the court, to write patents carefully”(3)Special Claims(a)Product by Process: if you cannot characterize the product well enough, you receive less protection under the Abbott conception: (i)When you get a product by process claim, it is NOT infringed when someone makes the product by another process; (ii)If there is already a patent on this product, you CANNOT get a product-by-process claim (just a process one) (b)Means + Function Claims: you cannot import limitations from the specification into the claims (typically), but here, you can (i)To cabin the breadth of these claims (there is one equivalents analysis1.

  • Left Quote Icon

    Student Picture

  • Left Quote Icon

    Student Picture

  • Left Quote Icon

    Student Picture