I was very excited when Stuart Soffer, a Non-Resident Fellow, Stanford Law School Center for Internet and Society informed me of his forthcoming book, “Thesaurus of Claim Construction” which is co-authored with Robert C. Kahrl, a long term partner at Jones Day. Such a book is long overdue.
The nice people at Oxford University Press kindly sent me a copy.
The work is mostly an alphabetic arrangement of words and phrases that have been construed in the course of patent litigation and includes over 7000 entries. Since such constructions are, by definition, rulings regarding the meaning of the word or phrase in the specific context. Consequently such constructions are not binding precedents and aren’t even much use as an indication of what a phrase would be interpreted to mean in another claim construction. Nevertheless, the definitions do show what the words could be taken to mean.
The range of words and phrases that have been the subject of claim construction may be surprising to some. Chief Judge Markey in Senmed vs. Richard Allan Medical Industries, Inc 888 F.2d 8215, 819 n. 8 (1989) commented on a construction of the word ‘on’ in a claim, that;
”lawyers may create a dispute about any word”.
Chapter 1, ‘How to use this book’ is well worth reading, but I rarely bother with user manuals and certainly have no intention to review a user manual for a book, so will move on.
Chapter 2, titled ‘Outline of the Law of Claim Construction’ is a must read for litigators and is valuable reading for practitioners drafting claims. Personally, I believe that expensive disputes could be avoided by using words more carefully, preferably in accordance with their regular meanings and with definitions in the specification. Nevertheless, it is valuable to review the hierarchy between dictionary definitions, the specification, extraneous sources and the file wrapper. There are also differences in how the preamble, transitional phrases and limiting clauses are interpreted. It is useful to remember that the correct construction is what the word meant at the time of filing, apart from the cases where limitations crept in during prosecution.
The lion’s share of the book is devoted to Chapter 3, an alphabetical list of “Simple terms” that have been construed at some time or other, with indications of which definition and which party prevailed and which constructions were rejected. The entries are referenced with the details of the court dockets for further reference.
The list starts with a construction of the symbol %, and reminds us that compositions should be given as weight percent, or volume percent, and that it should be clear if the percentage is of the total composition, or of only part. The next words to be examined are ‘a’ and ‘the’. One can understand why a term like ‘AC energy’ required construction as it is ambiguous, since current is measured in amps and energy in joules, but who would have the foresight to define whether ‘AC wave’ implies the wave created by a varying current over time, or whether the direction of the current has to keep reversing? Likewise the effect of adding words like ‘about’ in a claimed range becomes clearer on reviewing the way such claims are construed.
It will be appreciated that words beginning with letters B through Z have also been construed and this review is not intended to comment comprehensively on all the entries. One can amuse oneself by opening randomly and seeing what terms have been discussed though. For instance, in a particularly adolescent moment I discovered how the court interpreted the term nipple cover.
In Allure Home Creations vs. Zak, the term ‘second vessel’ was interpreted to mean ‘a preformed sealed vessel enclosing a first liquid and an insoluble structure floating on the first liquid. One presumes, therefore, that the context had nothing to do with first and second vessels relating to reheating foodstuffs on the Jewish Sabbath without violating the Biblical prohibition of cooking – tha is unless the claimed invention related to chicken soup with kneidlach (matzo balls).
One of my esteemed Israeli competitors has the endearing habit of defining the word plurality to mean ‘one or more’ in his specifications. Native English speakers working for him have been unable to convince him that this is simply wrong. I was pleased, therefore to see that the many constructions of the word plurality all take the word to mean at least two. Nevertheless, one wonders how his claims would be construed.
The book relates to litigation in the US, but, since the US is an important market, and because judges everywhere seem to have little scientific aptitude and lawyers everywhere play semantic games, the book will appeal to an international audience.
In addition to giving the history of Marksman there is also a valuable chapter on ‘means + function’ claims and how they are construed. Apart from guiding litigators, the book may help claim drafting, should help designing around, and will prove invaluable to practitioners required to express opinions about the work of others. It is also an impressive addition to one’s shelf of dictionaries and reference books, since it has approximately similar dimensions to standard editions of Roget’s prior art.
Thesaurus of Claim Construction, Robert C Kahrl and Stuart B. Soffer, Oxford University Press 2011. Well worth the $295 asking price.
