Strategies for Patent Claim Construction

The past few years have seen a number of decisions focused on examining claim interpretations in patent infringement litigation, particularly in the use of extrinsic evidence. The federal circuit's recent decision in Phillips v. AWH clarifies the use of such evidence in construing the meaning of terms in a claim, shifting more emphasis to the intrinsic record.

Listen to our authoritative panelists examine the weight given to specifications, prosecution history, and extrinsic evidence and the role of dictionaries and specifications in determining the meaning of terms. The panel will focus on the impact of the Phillips' decision on litigation, opinion drafting, patent prosecution and corporate patent policies, as well as other decisions interpreting claim construction, and discuss best practices for defending patents.

Hung H. Bui, Partner, Stein McEwen & Bui, Washington D.C., counsels clients regarding IP matters, with a special focus on prosecution and strategic planning of IP portfolios. He previously served as a Patent Examiner in the computer group of the U.S. Patent & Trademark Office.

Warren MacRae, Partner, Bryan Cave, New York, concentrates his practice in chemical patent matters with particular emphasis in the areas of pharmaceuticals, biotechnology, polymer technology and food chemistry. A significant portion of his practice is devoted to patent litigation and litigating interferences, and counseling clients in areas of patent validity, infringement and enforceability. He also represents clients before the United States Patent and Trademark Office, focusing on prosecution and appeals in strategically important patent applications.

Astrid R. Spain, Partner, McDermott Will & Emery, San Diego, counsels clients in developing and protecting their intellectual property rights and concentrates her practice on patent prosecution, with particular emphasis on biotechnological and pharmaceutical technologies. She also advises clients regarding strategies for maximizing the value of intellectual property portfolios and evaluating competitive technologies.

They will address these and other key questions:

• What is the role of intrinsic vs. extrinsic evidence and the prosecution history in construing a patent claim?
• What is the relevance of the doctrine of equivalents post-Phillips?
• What are the lessons of Phillips and other recent federal circuit decisions on claim construction for patent attorneys?

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