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[jmc]

how important are the specifications of a patent in court in terms of the claims?

[Wiscagent]

There are volumes of court decisions about this.

At a minimum:  if the specification does not comply with 35 USC 112, the patent will be found invalid.

[jmc]

thank you,  do they use the specifications to explain the claims or do the claims stand on their own?

[Isaac]

The claims define the metes and bounds but the claims are read in light of the specification.

That is of course far from a clear answer, but its probably the best you can do in only a few words.   Read the CAFC en banc decision in Phillips vs AWH Corp for more words on the subject, and come back here and ask Jim to clarify what you've read

[jmc]

ok, if i understand what i just read the specifications can be used to clear up the language of a claim, can the specifications limit the use of the invention? or do the claims limit it?

[JSonnabend]

It is always the claims that define the scope of the patent.  The specification, however, may help to define the scope of the claims.  Thus, indirectly, the specification helps to define the scope of the patent.  The specification is never read directly on an accused device however, only the claims (as interpreted in light of the specification).

Sound confusing?  Well, that's only because it is, and it's the crux of almost every infringement cases.  It's largely where attorneys make their money.

I have an action currently pending in the Southern District of New York, and much of the entire case boils down to the meaning of "rotatably mounted" as used in a claim.  The specification directly addresses the definition of this phrase, but the other side is fighting tooth-and-nail to convince the judge to ignore what the spec says.  Such is the nature of infringement actions.

- Jeff

[chemichael]

Jeff,

Not sure if you can comment on your case too much, but can you summarize the arguments that the other side is making for why the defintion in the spec should be ignored.  See how the applicants are their own lexicographers, if you define the term, that definition should be used.  Are there file wrapper estoppel issues here?

Michael

[JSonnabend]

Well, in short, the other side is clinging to Fed Circuit case law that says "thou shalt not read the specification into the claims".  While I agree that's the general rule, I'm pointing to specific "exceptions" to that general rule, namely, rules concerning blanket statements contained in the specification.

- Jeff

[JimIvey]

I'll try to give an intuitive perspective on the significance of the specification in interpreting the claims.  

The claims cover what one of ordinary skill in the relevant technologies would understand they cover.  If this hypothetical person of ordinary skill had read the entire specification prior to reading the claims, this person would have some understanding of what the various terms of the claims mean.  This understanding can come from dictionary meanings, from terms of art, and from context and/or explicit definition in the specification.

I personally get some insight into this process when I read an application for computer technology written by someone with little or no experience in that technology.  Terms are used in odd ways, and I have to intuit what the terms are supposed to mean in that application.  One that comes to mind is "primary storage" and "secondary storage".  Historically, those meant volatile memory (e.g., RAM) and non-volatile memory (e.g., disks), respectively.  But, when you read the spec, it's pretty clear they meant something like high-speed (or in-processor) cache and system memory, respectively.  Sometimes they just mean two different collections of storage of equal construction just used for different purposes.  When the spec and conventional interpretations disagree, which controls?  My sense is that it's a "you know what we mean" standard.

The law was moving toward dictionary-only interpretations.  In my opinion, it was part of a trend of eviscerating patents of any value for any modest mistakes -- a host of gotchas like Festo.  In Philips (noted by Isaac), the court moved away from that and toward a more reasonable standard of allowing the spec to shed light on what various terms mean -- getting closer to my intuitive perspective above.

Now, when writing an application, I always do my best to avoid any contradiction between conventional definitions and my usage in the application.  If you're looking at an application after-the-fact, things are in your favor if you're following a common-sense, "you know what I mean" interpretation of a term and you're fighting an uphill battle if you're striving for a more strained, formalistic interpretation of a term.

Regards.