If your eyes are rolling back in your head while you're reading this, consider yourself normal. If you're getting excited, then you might love claim construction hearings, those patent litigation proceedings during which lawyers argue about the meaning of words—especially the meaning of everyday words. Other than the trial itself, the claim construction process is the most important part of a patent lawsuit, one that's been required since the Supreme Court's Markman decision in 1995. How a court decides to define a particular term can put an accused product definitively within, or outside of, the patent claims at issue in a lawsuit.
Now, the Public Patent Foundation has released a free "Claim Construction dictionary" that the group predicts could well reduce the expense and difficulty of conducting research on patents. In fact, David Garrod, who edited the dictionary, believes they could make researching patent claims—whether in connection with a claim construction hearing, or an infringement opinion—"dramatically cheaper."
For example, there have been eight published decisions on how to define the word "user." Why so much debate over a simple word? Well, some patent-holders want the definition to be expansive enough to cover a computer that's interacting with a networked system. Defendants prefer strict and narrow definitions—defining the word "user," for instance, as applying only a human being—that allow them to avoid or limit a ruling that they've infringed a particular patent. (For the record, most, but not all, of the published decisions have ound the word "user" to refer only to humans.)
If the eight definitions of "user" aren't enough for you, check out the more than 30 cases that have struggled with the word "coupled," all of which are listed in PubPat's press release announcing the dictionary's debut. Being able to quickly see all those definitions in one place will obviously aid litigators heading into claim construction hearings where "coupled" could be an issue. But such a reference tool could also help in-house counsel who are trying to determine whether their own products, or those of a competitor, are in danger of infringing particular patent claims.
"Right now, it's extremely inefficient to search for constructions of common English words," says Garrod. "The dictionary basically demystifies the construction of patent claims. It will enhance uniformity. If there is an obviously preferred construction, future courts will tend to choose that construction."
Ultimately, that could reduce litigation costs—but only if the wide dissemination of all constructions deters patent litigators from making way-outside-the-mark arguments. (And that, even Garrod acknowledges, is a big 'if.')
Now identified as PubPat's senior litigation counsel, Garrod is in charge of the organization's campaign of filing lawsuits to stamp out false marking. PubPat campaign launched the campaign last May, perhaps anticipating what has become, to put it very mildly, a false-marking patent suit trend that has caught on recently.)
Last year, The Prior Art covered Garrod's side project, an unusual one for a PubPat attorney: he owns a patent-holding company, Bedrock Computer Technologies, which has enforced a software patent by suing several technology companies in East Texas.
Garrod was a litigator at Goodwin Procter before joining up with PubPat (he and the group's executive director, Daniel Ravicher, are longtime friends.) In PubPat press release announcing the dictionary, Ravicher praised it as "a huge contribution to the public knowledge about patents" that he expects will become a "go-to" resource for anyone doing researching in the area.
There's no charge for the dictionary, which is available via both PubPat's server and Google Docs. It's divided into three glossaries: one covering claim terms regarding electronics, computer science, and business methods; another for "mechanical, electro-mechanical, and medical devices"; and a third for "chemical, pharmaceutical, and biotechnology arts." To compile the dictionaries, Garrod reviewed every district and appellate court decision construing claim terms since 1995, when the Markman case was decided.
Some of the editing involved removing certain definitions—for example, removing repeats when the same term is defined the same way in the same case, or removing "means plus function" claims that are so tied to a particular patent that they have little precedential value. But Garrod says his editorial judgment was "strongly biased towards inclusion." Garrod says he's been working on the dictionary for a few years, often while commuting from his Connecticut home to his former law firm job in New York. He says he knows of "at least two commercial entities moving forward with similar projects." But Garrod thinks his open-sourced dictionaries, available for free, will beat those commercial versions hands down.
Photo: J. Groß / Wikimedia