PATENT LAW or another, emphasis on the specifi cation is what
the inventors invented.” So, the the
inventors contemplated. Here, a PTAB Phillips/Markman-like claim
construction can involve more emphasis on written description. Procedurally, there can be initial filings by both parties (with certain page limitations, as in all other filings), with no more than one supporting affidavit or declaration. Because disputes often come down to one or two claim limitations, the declaration can be made by someone who possesses ordinary skill in the particular art commenting on the particular
claim
interpretation. Let us take as an example the claimed term
“fastener”, where a “screw” and “nail” are discussed in the patent specification. The specification also describes that the “fastener” is detachable, and never mentions “glue” as an embodiment. The alleged infringer may be using Velcro, but a BRI of “fastener” can read on the prior art disclosure of “glue”.
If
the specification was not just consulted, but used to import meaning, then a “fastener” cannot include “glue”, especially if it is not detachable or “glue” is never contemplated
by the inventors as evident from reading the entire specification. It is worth noting that the intrinsic evidence
for claim construction is: (1) the claims, (2) the specifi cation, and (3) the prosecution history record. But isn’t a prosecution history record being created during the trial? Another possible compromise is the prosecution history record as made by the trial record itself giving the narrower claim construction. Aſt er such a determination, patentability
can still be determined using a prima facie case with the preponderance of evidence standard (versus presumption of validity requiring clear and convincing evidence to prove invalidity), where there is still more protection for the patent owner with the possible narrower claim construction. If the STRONG Act does not pass any time
soon, patent owners can still pressure the USPTO to change its claim construction practice to be narrower than BRI but aligned with case law. Otherwise, the patent owner should have other back-up plans, such as a pending continuation application in the (statistically likely) event that some or all of the patent claims are cancelled with a fi nal written decision.
Eugene Perez is a patent attorney at Birch, Stewart, Kolasch & Birch. He specialises in chemical, pharmaceutical and biotechnology patents. He has argued before the US Court of Appeals for the Federal Circuit and the USPTO. He can be contacted at:
etp@bskb.com
GROUP News, Features and Analysis Q JANUARY/FEBRUARY 2015 VOLUME 3, ISSUE 4 VOLUME 2, ISSUE 1
A COMPLEX WEB:I TEN DEVELOPMENTSI TO WATCH IN 2015I
IP LESSONS FROM THE ‘ICE BUCKET CHALLENGE’
A CULTURE OF TRANSPARENCY
New dawn for clinical trial data
Teva v Sandoz The Copaxone battle
PlasmaTech Fighting on two fronts
Google contact lens Seeing the future
PLUS: A FLURRY OF ‘JE SUIS CHARLIE’ TRADEMARK APPLICATIONS Tata Technologies
The patent paradox
Tech transfer The valley of death
Growing pains
Image rights The fame game
Christmas adverts IP protection
Online counterfeiting Richemont v ISPs
Parody campaigns Tackling fake websites
One to watch Garcia v Google
Canada’s Supreme Court No ruling on Plavix
PLUS: IS IPEC THE RIGHT FORUM FOR LIFE SCIENCES?
www.worldipreview.com
www.trademarksandbrandsonline.com www.lifesciencesipreview.com
www.worldipreview.com World Intellectual Property Review May/June 2015 51
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