September 30, 2016

Friday Musings: Newton’s Laws of Claim Construction

By Bryan K. Wheelock, Principal

When you stop and think about it, Newton’s Laws can be applied to the all-important issue of claim construction.

Newton’s First Law of Claim Construction:  A term in a claim has its ordinary meaning to a person of skill in the art, unless acted upon by the specification or prosecution history.

Newton’s Second Law of Claim Construction:  Claim scope is directly proportional to specification disclosure, and inversely proportional to the scope of the prior art.  Put another way, claim scope is the product of the patent’s disclosure and the prior art.

Newton’s Third Law of Claim Construction:  For every canon of claim construction, there is an equal an opposite canon of claim construction.  For example:  Canon: “Each Word in Claim is Presumed to Have Meaning.”  See Foremost In Packaging Sys. v. Cold Chain Technologies, 485 F.3d 1153 (2007); In re Gabapentin Patent Litigation, 503 F.3d 1254, (2007); Stumbo v. Eastman Outdoors, Inc., 508 F3d 1358, [85 USPQ2d 1275] (Fed. Cir. 2007); Bicon v. Straumann, 441 F.3d at 950 (2006) (Rejecting patentee’s proferred construction, in part because that construction would render some of the claim language superfluous.).  Opposite Canon:  “A Preamble is Generally Not a Limitation.”  See Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346 [63 USPQ2d 1769] (Fed. Cir. 2002) (“Generally”. . . the preamble does not limit the claims.”).

Look for More on Newton’s Third Law of Claim Construction in future posts.