Originally uploaded at SSRN.

Abstract

Claim construction jurisprudence is in disarray. The U.S. Court of Appeals for the Federal Circuit reverses trial court claim construction decisions at a worryingly high rate. The proportion of Federal Circuit claim construction opinions that include separate concurrences or dissents continues to grow. And the muddled mix of issues the Federal Circuit framed for en banc review in the Phillips case suggests that the court is having trouble reaching consensus on what the central questions are, much less on how to answer them. Perhaps the path to adequately predictable claim construction is continued tinkering with the analytical constructs internal to the Federal Circuit's claim construction jurisprudence. But I doubt it. In this paper, I therefore take a sharply different approach to the question, how can we make claim construction more predictable? Inspired by the maxim garbage in, garbage out, I look to the patent system actor that has plenary power, within the broad outline set by the Patent Act, over the details of all patent disclosures - namely, the Patent Office. Specifically, I examine additional, low-cost disclosures that would assist claim construction and that the Patent Office can demand from all patent applicants. Carefully selected disclosures would make all patents far more helpful tools in their own construction, providing social benefits that far outweigh the added patent preparation costs. I explore four additional patentee disclosures, all requiring express statements on the face of the patent itself: (a) the field of art to which the claimed invention pertains; (b) all problems that the claimed invention helps solve; (c) a lexicon of all claim terms to which the applicant gives a meaning other than its accustomed meaning to people having ordinary skill in the pertinent art (along with a supporting interpretive rule barring special meanings for any terms not in the lexicon); and (d) a list of preferred objective reference sources, such as technical treatises and dictionaries (general or specialized), to which an interested reader should refer to learn about the ordinary meaning of the remaining claim terms to a person having ordinary skill in the art. In any subsequent claim construction process, whether for licensing, design-around, or litigation purposes, parties would have the benefit of patents enriched with this new information. The patent document, enhanced in this way, would better fulfill its role as claim construction's central resource.

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