Patently Strategic - Patent Strategy for Startups

Claim Construction: Building Strong Patent Foundations

9 snips

Jan 31, 2024

Guest

David Jackrel

Guest

Kristen Hansen

In this engaging discussion, Kristen Hansen, a Patent Strategy Specialist at Aurora, and David Jackrel, President of Jackrel Consulting, dive into the complexities of claim construction. They explain how precise language in patent drafting can significantly impact future litigation outcomes. The conversation highlights the importance of distinguishing intrinsic from extrinsic evidence and navigates the challenges jurors face with technical information. Listeners gain insights into the historical context of claim construction and its critical role in patent defense.

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INSIGHT

Choose Words To De-Risk Future Litigation

Choose precise claim language and support it in the specification to reduce future ambiguity.
Kristen Hansen emphasizes defining sizes, ranges, and relative terms during drafting.

INSIGHT

Claim Construction Is A Court-Led Interpretation

Claim construction is the courts' process to interpret claim meaning and scope.
Kristen Hansen warns prosecution history and PTAB decisions can be used against applicants.

ADVICE

Don't Call Out A 'Preferred Embodiment'

Avoid labeling any 'preferred embodiment' or 'best mode' in the specification.
Kristen Hansen warns this invites courts to narrow claim scope based on that named example.

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Claim construction is a process in which courts attempt to interpret the meaning and scope of the claims of a patent. It’s like reconstructing what an inventor and their practitioner meant back when they drafted the patent application. While your patent might not be tested in a court for many years, understanding the sometimes surprising language specifics and context traps while drafting now can help set you up for success later when defending your patent or attempting to stop an infringer. The words you choose now and the support you provide when drafting are your opportunity to help derisk the process of courts and juries later interpreting what you meant. And oftentimes, claim construction can be the KEY FACTOR in resolving disputes even before litigation, with the facts that come out of claim construction deciding the monetary value and payouts in settlements.

Kristen Hansen, Patent Strategy Specialist at Aurora, leads the discussion along with our all-star patent panel, exploring:

⦿ The evolution of claim terms
⦿ Claim construction basics and a historical look at what are called Markman hearings
⦿ Intrinsic evidence vs. extrinsic evidence
⦿ Claim construction in prosecution vs. litigation

Kristen is also joined today by our always exceptional group of IP experts including:

⦿ Dr. Ashley Sloat, President and Director of Patent Strategy at Aurora
⦿ Dr. David Jackrel, President of Jackrel Consulting
⦿ Dr. David Cohen, Principal at Cohen Sciences
⦿ Steve Stupp, Partner at Stupp Associates, LLC
⦿ Ty Davis, Patent Strategy Associate at Aurora
⦿ Arman Khosraviani, Patent Agent and Former US Patent Examiner

** Mossoff Minute **

This month's Mossoff Minute, Professor Adam Mossoff discusses recently proposed regulations that would misapply Bayh-Dole provisions to impose march-in rights on patent-protected innovations and create price controls via compulsory licensing. This amounts to government seizure of private property and will do tremendous harm – especially to the life sciences – if implemented.

** Going Deeper **

⦿ Patent Claim Basics and Strategies
⦿ Patent Anatomy Guide

** Follow Aurora Patents **

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⦿ Twitter: https://twitter.com/AuroraPatents
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⦿ TikTok: https://www.tiktok.com/@aurorapatents
⦿ YouTube: https://www.youtube.com/@aurorapatents/

Thanks for listening!

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Note: The contents of this podcast do not constitute legal advice.

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