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Author Topic: Claim interpretation question  (Read 514 times)

Patentstudent

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Claim interpretation question
« on: 06-28-18 at 09:20 am »

I am looking at a patent in which the first and sole independent claim claims that a first element (1) is positioned excentrically relative to a second element (2).
The description does not define the word 'excentrically'.
So, I presume that any positioning in which the centers of the two elements don't coincide (i.e. in which the two elements are not concentric) should be considered excentric positioning.
Is that correct? Or (in case of a court case) is a judge likely to look at the intention behind this claim and to limit the width of the meaning of excentric in line with the intention?

Thank you for your answers.
   
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Robert K S

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Re: Claim interpretation question
« Reply #1 on: 06-28-18 at 10:17 am »

Absent applicant lexicography, a person skilled in the art would recognize this to be a clear misspelling of "eccentrically," which is pronounced like "ex-centrically", and has the meaning you ascribe (two things placed off-center with respect to each other).
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This post is made in the context of professional discussion of general patent law issues and nothing contained herein may be construed as legal advice.

Patentstudent

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Re: Claim interpretation question
« Reply #2 on: 06-28-18 at 10:49 am »

Thank you, Robert K S.
Forgive me the misspelling. English is not my mother tongue.
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still_learnin

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Re: Claim interpretation question
« Reply #3 on: 06-28-18 at 10:58 am »

I am looking at a patent in which the first and sole independent claim claims that a first element (1) is positioned eccentrically relative to a second element (2).
The description does not define the word 'eccentrically'.
So, I presume that any positioning in which the centers of the two elements don't coincide (i.e. in which the two elements are not concentric) should be considered eccentric positioning.
Is that correct? Or (in case of a court case) is a judge likely to look at the intention behind this claim and to limit the width of the meaning of eccentric in line with the intention?

[Spelling error corrected]

Patentstudent, looks like you're not asking about the effect of a misspelled claim term, but instead about taking into account the "claim drafter's intent" when interpreting a claim term that is not defined in the specification.

First, what is your evidence of the claim drafter's intent?

Second, you ask about a judge in a court case ... does this mean you are not asking about / concerned with claim interpretation during prosecution before the Examiner?
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Robert K S

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Re: Claim interpretation question
« Reply #4 on: 06-28-18 at 11:21 am »

Ah.

When I first responded I thought that OP was asking about the meaning of a term written in a nonstandard spelling.  Perhaps what OP is actually asking about is the claim construction standard during litigation.  In a litigation context, it is possible that a claim term will be construed to have more limited breadth than a "broadest reasonable interpretation", and intrinsic and extrinsic evidence may be consulted to ascertain the claim term's scope.
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Patentstudent

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Re: Claim interpretation question
« Reply #5 on: 06-28-18 at 11:48 am »

@still_learnin
Thank you for your reply.
I don't have any evidence of this specific claim drafter's intent, but I was wondering whether a judge would try to grasp a claim drafter's intent.
It is correct that I am not asking about / concerned with claim interpretation during prosecution before the Examiner.
It is concerns agranted European patent. 
   
@Robert K S
Thank you.
Your answer that: "In a litigation context, it is possible that a claim term will be construed to have more limited breadth than a "broadest reasonable interpretation", and intrinsic and extrinsic evidence may be consulted to ascertain the claim term's scope." is very helpful to me.
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still_learnin

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Re: Claim interpretation question
« Reply #6 on: 06-28-18 at 03:30 pm »

It is concerns agranted European patent. 
Ah, that's very important. Patent laws are specific to a particular country, and there are important differences between countries. Most of the people who post here on this forum are US patent practitioners, so most of what we say is actually specific to US practice, even though we rarely say so in our posts.

We have a few European practitioners here, so hopefully one of them will jump in.

Your answer that: "In a litigation context, it is possible that a claim term will be construed to have more limited breadth than a "broadest reasonable interpretation", and intrinsic and extrinsic evidence may be consulted to ascertain the claim term's scope." is very helpful to me.

Robert's info is helpful for interpreting a US patent claim, but not relevant for a European patent. :-(

I don't have any evidence of this specific claim drafter's intent, but I was wondering whether a judge would try to grasp a claim drafter's intent.

Just to clarify: I didn't mean evidence of intent in the sense of actual communication from the claim drafter. What I really meant (but didn't express well) is evidence from the specification and/or prosecution history.

You note that the description didn't define the term at issue. It's unusual (in most US patents, at least) to have an actual definition of a claim term. Even so, a reader can look at how the term is used in the description and get some information about what the drafter intended the term to mean. This is the sort of (intrinsic) evidence that is used during US litigation to interpret the claim term.
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Patentstudent

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Re: Claim interpretation question
« Reply #7 on: 07-03-18 at 03:19 am »

still_learning, thank you for emphasizing the difference between US patent law and European patent law and for clarifying your remark about the drafter's intent.
In this patent the drawings provide implicit evidence with respect to the meaning of the term eccentric. 
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bartmans

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Re: Claim interpretation question
« Reply #8 on: 07-04-18 at 07:10 am »

Quote
We have a few European practitioners here, so hopefully one of them will jump in.

I'm jumping in  :).

Indeed the interpretation of claims of European granted patents recently has been discussed in a few court cases. Basically, there are two possibilities to read claims in a broader way. The first is whether or not the literal term is unclear. The interpretation of the claim is given by the literal meaning, but should be considered in view of the specification and drawings. Of course, such interpretation is seen through the eyes of teh skilled person
However, in a recent Dutch case (ECLI:NL:HR:2018:854) the claim read: 1. [Compound A] or a non-toxic pharmaceutical acceptable salt thereof. The specification contained the following definition:
Quote
[0007] The term “a non-toxic pharmaceutically acceptable salt” refers to a salt in which the cation is an alkali metal ion, an alkaline earth metal ion, or an ammonium ion. Examples of alkali metals are lithium, sodium, potassium, and cesium, and examples of alkaline earth metals are beryllium, magnesium, and calcium. Sodium and calcium are preferred.
The infringer came with a zinc salt which arguable would fall outside of the definition (but inside the scope of the claim?). Here the court decided that it was the intent of the applicant to protect all Salts and the zinc salt was said to infringe.

Thus, for interpretation of the claims 'intent' may play a role.

In the case being questioned the term 'excentrically' (or 'eccentrically'). The meaning of the term will depend on the use of this word in the claimed product or method, the clarification that may be provided by the specification and how the skilled person would understand this term. Without any further information it is difficult to give a clearcut answer to the question.

The second possibility is that the scope of the claim is deemed to include equivalents. There have been a few court cases in the recent past, the most important being the case on pemetrexed  where a potassium salt of a drug was found to be equivalent to (a claimed) sodium salt.

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Patentstudent

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Re: Claim interpretation question
« Reply #9 on: 07-09-18 at 09:05 am »

Thank you, bartmans.
Interesting court cases/decisions.

In the meantime, we did some research and have become quite certain that eccentric in the specification and claim of the published European patent is definitely meant to exclude concentric.   
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