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1. Claim construction
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"The patent is a fully integrated written instrument. By statute, the patent must provide a written description of the invention that will enable one of ordinary skill in the art to make and use it. 35 U.S.C. § 112, para. 1. Section 112, para. 2, also requires the applicant for a patent to conclude the specification with claims 'particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.'" (Markman v. Westview Instruments (1995) 52 F.3d 967, 978 [34 U.S.P.Q.2D (BNA) 1321].)
The Markman court described patent-infringement analysis as a two-step process: first, determine the meaning and scope of the patent claims, and second, compare the "properly construed claims to the device accused of infringing." (Id. at 976.) The first step is referred to as claim construction or interpretation. The court contrasted the decisions finding claim construction a matter of fact for the jury, and those identifying the issue as a matter of law for the court. It found the line of Federal Circuit opinions following the latter principle more compelling and cited Supreme Court decisions holding that "construction of a patent claim is a matter of law exclusively for the court." (Id. at 977.) As a written document, interpretation of the specification of a patent parallels contract law, according to the Markman court. Ad similar to contract law, when interpretation of the written document is a point of contention, the court will look outside the written document for "extrinsic evidence to assist in its construction of the written document." (Id. at 981.) The challenge for software-patent applicants is to meet the Section 112 requirement for "clear, concise, and exact terms": "Section 112 of Title 35 requires that specifications 'contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same . . .' and requires that the specification 'shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.' 35 U.S.C. § 112 (emphasis added). This statutory language has as its purpose the avoidance of the kind of ambiguity that allows introduction of extrinsic evidence in the contract law analogy. See, e.g., [Keystone Bridge Co. v. Phoenix Iron Co. (1877) 95 U.S. 274, 24 L.Ed. 344] at 278 ('When the terms of a claim in a patent are clear and distinct (as they always should be), the patentee, in a suit brought upon the patent, is bound by it.') (emphasis added)." (Markman v. Westview Instruments, supra, 52 F.3d 967, 978.) As with contract interpretation, courts are conservative in their application of extrinsic evidence to their reading of patent specifications: "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. U.S. Indus. Chems., Inc. v. Carbide & Carbon Chems. Corp. (1942) 315 U.S. 668, 678, 53 U.S.P.Q. (BNA) 6, 10 [86 L.Ed. 1105, 62 S.Ct. 839]; Catalin Corp. of Am. v. Catalazuli Mfg. Co., 79 F.2d 593, 594, 27 U.S.P.Q. (BNA) 371, 373 (2d Cir. 1935) (Learned Hand, J.) ('If the doctrine of the "integration" of a written instrument has any basis at all, surely it should apply to such a document . . . [as the patent].'); 3 Robinson on Patents, supra, § 1019, at 247-48. When, after considering the extrinsic evidence, the court finally arrives at an understanding of the language as used in the patent and prosecution history, the court must then pronounce as a matter of law the meaning of that language." (Markman v. Westview Instruments, supra, 52 F.3d 967, 981.) The Markman court pointed out that, unlike contracts, patent applications are reviewed by patent examiners with expertise in interpreting prior-art references and other matters relating to patent validity. (Id. at 986.) It also compared patent interpretation with statutory interpretation. (Id. at 987.) However, the dissent in Markman emphasized that underlying the matters of law in claim interpretation are factual inquiries that are rightly determined by juries. The dissent also stated that the decision contradicts the Seventh Amendment right to a jury trial. (Id. at 1000.) 2. Doctrine of equivalents and rule of prosecution history estoppel |