Even More Complex after All These Years: What the Complexity of the 'How?' Question of Tailoring Claim Scope Has to Say About the 'Who?' Question

Abstract

This brief comment initially identifies an overlooked complexity in the “How?” question of tailoring claim scope. There is a redundancy in the potential doctrinal mechanisms or "policy levers" that courts could use to tailor claim scope. For example, as is well known, a narrow claim construction and the invalidation of a patent’s broader claims under the disclosure doctrines can both be used to achieve the same substantive tailoring of claim scope. In light of this redundancy, how should courts proceed? Even if they know the optimal substantive claim scope, which of the several doctrines that they could use should they use in any given case?

This comment then proceeds to argue that this overlooked complexity in the "How?" question raises a to-date unexpressed concern about the “Who?” question of tailoring claim scope. Even if the courts are in a relative sense the most competent institution to substantively tailor claim scope to its economic justifications, they may not be the most competent institution to establish the rules on a system-design level that are needed to specify which of the redundant "policy levers" should be employed in any given case. Without these rules, patent jurisprudence on claim scope is likely to resemble a game of “whack-a-mole.” Distinct opinions are likely to pound away on distinct doctrines, one after the other and in an uncoordinated fashion.