Advanced Issues for Patent Claim Construction: Leveraging Recent Court Guidance

Navigating New Standard of Review, Interplay With Litigation and Choice of Law, and Continuation Application

Recording of a 90-minute premium CLE webinar with Q&A

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Conducted on Thursday, July 30, 2015

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Course Materials

This CLE course will provide guidance to patent counsel regarding the impact of recent court decisions and the guidance they provide on claim construction. The panel will offer their experiences and practical approaches for addressing claim construction issues.


The AIA expanded the definition of prior art and eliminated interference practice. The AIA post-grant proceedings did not adopt claim construction procedures as used by many federal courts, but instead adopted a broadest reasonable construction (BRI) standard. Counsel needs to be mindful of choice of law issues as well as the different claim construction standards applied by district courts and PTAB.

The Supreme Court’s decision in Teva Pharmaceuticals USA v. Sandoz Inc. has further impacted claim construction by requiring the Federal Circuit to defer to the district court’s factual findings in the claim construction determinations thereby giving the district courts more latitude. In the one precedential PTAB appeal decision so far, In re Cuozzo, the Federal Circuit indicated Teva applied to review of PTAB claim construction also. The Supreme Court and subsequent decisions provide valuable guidance for patent counsel in addressing claim construction issues.

What are the benefits and risks for new claims in a continuation application? The applicability of AIA over pre-AIA depends on effective filing dates (EFD) of claims. If a claim is given its broadest reasonable construction during prosecution, what impact will that claim construction have on EFD and choice of law?

Listen as our authoritative panel of patent attorneys examines the impact of recent developments for patent claim construction. The panel will divine best practices for patent counsel post-AIA and in light of recent court decisions, which provide some clarity for claim construction.



  1. Changes resulting from AIA and implications for claim construction
    1. Changes related to post-grant proceedings
    2. Prosecution changes
  2. Best practices in light of recent court guidance
    1. Perils of new claims in a continuation application regarding choice of law
    2. Benefits of new claims in a continuation application regarding choice of law in view of transitional applications
    3. Broadest reasonable claim construction


The panel will review these and other key questions:

  • What guidance can be drawn from recent court decisions for claim construction in district court?
  • What can practitioners do during drafting and prosecution when facing different claim construction standards before district courts and PTAB?
  • What is the impact of claim construction on choice of law?
  • Can the choice of law change when a district court judge construes the claim in such a way that the EFD changes?
  • What if patent reform efforts pass requiring PTAB to use a district court's claim construction, if one exists?


Irving, Thomas
Thomas L. Irving

Finnegan Henderson Farabow Garrett & Dunner

Mr. Irving has 35 years of experience in the field of IP law. His practice includes due diligence, patent prosecution,...  |  Read More

Michael A. Oblon
Michael A. Oblon

Perkins Coie

Mr. Oblon focuses on patent and trade secret litigation, as well as strategic patent counseling and patent portfolio...  |  Read More

Lauren L. Stevens, Esq.
Lauren L. Stevens, Esq.
Global Patent Group

Ms. Stevens practices strategic client counseling and patent procurement in the pharmaceutical area, including the...  |  Read More

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