Substantive Claim Construction as a Patent Scope Lever
IP Theory, Vol. 1, p. 100-114, 2011
16 Pages Posted: 27 Feb 2011 Last revised: 3 Jan 2015
Date Written: February 25, 2011
This Essay proposes a new mechanism for optimizing patent scope, the amount of technological “coverage” afforded to a patent. Drawing on the seminal work of Robert Merges and Richard Nelson, it argues that courts should calibrate claim scope by utilizing “substantive claim construction.” Current claim construction is “hypertextual” and largely ignores technological and industrial context. To reform this practice, this Essay argues that in close cases, courts should consider the technical merit of a patented invention, attributes of the allegedly infringing product, and the competitive landscape in which these technologies operate when construing claims. Courts would then be empowered to construe claim terms broadly in light of significant contributions by a patent and narrowly where contributions are marginal or technological development in a particular field would benefit significantly from rivalrous competition. Ultimately, by considering context, courts could utilize claim construction as a lever to optimize patent scope. While this proposal seems radical, this Essay argues that it finds support in both the patent law’s historical system of central claiming as well as the Supreme Court’s recent articulations on patent law.
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