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On Oct. 16, the U.S. Court of Appeals for the Federal Circuit recognized the use of dictionaries as a starting point of claim construction in Texas Digital Systems Inc. v. Telegenix Inc., 308 F.3d 1193 (Fed. Cir. 2002). The Federal Circuit upheld the precedent that dictionaries, encyclopedias and treatises, publicly available at the time the patent is issued, are objective resources that serve as reliable sources of information on the established meanings of the terms and are deemed as unbiased in fixing the intrinsic record. Texas Digital Systemshas immediate importance in the area of partial sequence of genes — known as expressed sequence tags (ESTs). Claim construction of ESTs is very important to biotechnology companies. On Jan. 5, 2001, the U.S. Patent and Trademark Office issued its final Utility Examination Guidelines making it clear that EST sequences are patentable subject matter. However, any conclusions biotechnology companies may have on any such patents will depend on claim construction. The holding in Texas Digital Systemswill help in claim constructions for these patents. One will be able to determine meanings of disputed terms used in the claims by consulting reference works publicly available at the time the patent is issued. This will reduce ambiguities in the meaning of disputed terms in the claims. Infringement analysis entails two steps. The first step is determining the meaning and scope of the patent claims alleged to be infringed. The second step is comparing the properly construed claims to the device accused of infringing. Read Corp. v. Portec Inc., 970 F.2d 816, 821 (Fed. Cir. 1992). The first step is commonly known as claim construction or interpretation. It is noted that the Federal Circuit does not differentiate between claim “interpretation” and claim “construction,” but has for consistency adopted the term claim construction. The importance of proper claim construction lies in two areas. First, the patent owner has the right to exclude others for a limited time from making, using, offering for sale or selling the invention as claimed. Second, it is only fair — and statutorily required — that competitors and the public be able to ascertain to a reasonable degree of certainty the scope of the patentee’s right to exclude. PATENT CLAIM CONSTRUCTION In Markman v. Westview Instruments Inc., 52 F.3d 967 (Fed. Cir. 1995), the Federal Circuit reiterated its position, and the position of the U.S. Supreme Court, that the construction of a patent claim is a matter of law exclusively for the court to decide: “It has long been and continues to be a fundamental principle of American law that ‘the construction of a written evidence is exclusively with the court.’” Id.at 978. Most patent infringement issues do not require the intervention of a court, and claim construction must be performed by one who can offer an independent and competent opinion. When a potential infringer has actual knowledge of another’s patent rights, it has an affirmative duty to obtain the advice of competent legal counsel before undertaking infringing activity or continuing to infringe. Underwater Devices Inc. v. Morrison-Knudsen Co. Inc., 717 F.2d 1380, 1389-90 (Fed. Cir. 1983). The Federal Circuit has addressed questions concerning the competence of counsel opinions on which one may rely. The Federal Circuit requires that the opinion, including claim-construction analysis, be competent and prepared by counsel who was competent to do so. Counsel may be an “in-house” patent attorney or an independent outside counsel. In Acoustical Design Inc. v. Control Electronics Co. Inc., 932 F.2d 939 (Fed. Cir. 1991), the Federal Circuit held that when the infringer only sought the opinion of general, not patent, counsel with regard to validity and infringement of the patents, it did not demonstrate “that this procedure led to a good faith belief that the patents were either invalid or not infringed.” Id.at 942. It appears the key here is that the counsel preparing the opinion on claim construction has to be a U.S. registered patent attorney and preferably has litigation experience. The Federal Circuit in Markman v. Westview Instrumentsfollowed the case law in claim construction, stating, “To ascertain the meaning of claims, we consider three sources: The claims, the specification, and the prosecution history.” Markman, 52 F.3d at 979. These three sources are collectively called intrinsic evidence. Extrinsic evidence consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries and learned treatises. This evidence may be helpful to explain scientific principles, the meaning of technical terms and terms of art that appear in the patent and prosecution history. The judge or competent counsel begins claim construction by first looking to the intrinsic evidence of record (i.e., the patent itself), including the claims, specification and, if in evidence, prosecution history. The claim language is first reviewed followed by the rest of the intrinsic evidence, beginning with the specification and ending with the prosecution history. “In construing claims, the analytical focus must begin and remain centered on the language of the claims themselves, for it is that language that the patentee chose to use to ‘particularly point … out and distinctly claim … the subject matter which the patentee regards as his invention.’” Interactive Gift Express Inc. v. Compuserve Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001). The Federal Circuit has pointed out that claim construction begins with a “heavy presumption” that claim terms have the ordinary meaning that would be attributed to them by persons skilled in the relevant art at the time the patent was issued. CCS Fitness Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). CONSULTING REFERENCE BOOKS The Federal Circuit held in Texas Digital Systemsthat it is proper for the court to consult dictionaries, encyclopedias and treatises publicly available at the time the patent is issued, at any stage, whether part of the evidence or not. In the case in which more than one meaning is provided by a dictionary, the intrinsic evidence must be consulted to determine which meaning is most consistent with the use of the words by the inventor. By consulting dictionaries and using the intrinsic evidence, a court can more accurately determine the full breadth of the limitations intended by the inventor, with less risk of importing limitations from the written specification, the Federal Circuit concluded. In addition, the Federal Circuit held that the sequence of reviewing the evidence is important in interpreting the claims. In particular, the court opined that it is imperative to give the terms in the claims their ordinary meaning before consulting other intrinsic evidence such as the patent specification or file history. After reading the claims with the ordinary meanings of the terms used therein, the judge or competent counsel then reviews the intrinsic evidence of record, (i.e., the patent itself) and the prosecution history. The intrinsic record must be examined in every case to determine whether the presumption of ordinary and customary meaning applies to the terms in the claims. Although the words in a claim are generally given their ordinary and customary meaning, a patentee may choose to be his own lexicographer and use terms in a manner other than their ordinary meaning, as long as a special definition of the term is clearly stated in the patent specification or file history. The prosecution history may limit the interpretation of claims to exclude any interpretation that may have been disclaimed or disavowed during prosecution in order to obtain allowance of the claims. As such, the file history is often of critical significance in determining the meaning of the claims. If, after reviewing the intrinsic evidence, there remains an ambiguity in a term in the claims, then the judge or attorney may consult extrinsic evidence such as prior art and inventor and expert testimony to resolve the ambiguity. USE OF EXTRINSIC EVIDENCE Extrinsic evidence may be helpful to explain scientific principles, the meaning of technical terms and terms of art that appear in the patent and prosecution history. The court may, in its discretion, receive extrinsic evidence in order “to aid the court in coming to a correct conclusion” as to the “true meaning of the language employed.” However, the extrinsic evidence is to be used for the court’s understanding of the patent, not for the purpose of varying or contradicting the terms of the claims. The Federal Circuit in Vitronics v. Conceptronic Inc., 90 F.3d 1576 (Fed. Cir. 1996), observed that, in most situations, “an analysis of the intrinsic evidence alone will resolve any ambiguity in a disputed claim term. In such circumstances, it is improper to rely on extrinsic evidence.” Id.at 1583. Claim construction is subject to the “doctrine of equivalents” and prosecution estoppel. The Supreme Court in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. Ltd., 122 S. Ct. 1831 (2002), dealt with both concepts. The doctrine of equivalents allows the patentee to claim those insubstantial alterations that were not captured in drafting the original patent claim but which could be created through trivial changes. When, however, the patentee originally claimed the subject matter alleged to infringe but then narrowed the claim in response to a rejection, he may not argue that the surrendered territory comprised unforeseen subject matter that should be deemed equivalent to the literal claims of the issued patent. The courts developed the doctrine of prosecution history estoppel to limit the application of the doctrine of equivalents in order to prevent the recapture of subject matter surrendered in examination of the application. There is little doubt that claim interpretation will continue to be a major issue for the courts and counsel to deal with, having major implications on infringement issues, especially in the area of gene sequencing. The Federal Circuit continues to set forth the protocol for claim construction and the proper evidence to use. It is clear that claim interpretation follows a sequence that begins with giving the terms in the claims their ordinary meaning at the time the patent issued, for which dictionaries, encyclopedias and treatises can be used. For emerging and unpredictable technology such as ESTs, one expects disputed terms, and the use of such reference works should assist the court in establishing the ordinary meaning of these terms. Then, other intrinsic evidence can be consulted to determine if the terms have a meaning different from that of the ordinary meaning. Philip McCann, James Medford and Kimberly Bullock Gatling are attorneys in the Greensboro, N.C., office of Smith Moore ( www.smithmoorelaw.com). If you are interested in submitting an article to law.com, please click herefor our submission guidelines.

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