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Definitions and strategy February 9, 2012

Posted by Brian Schar in Federal Circuit, Patent prosecution, USPTO.
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Recently, the Federal Circuit decided Thorner v. Sony Computer Entertainment America LLC.   That case clearly lays out the circumstances in which an applicant is considered to have acted as his or her own lexicographer with regard to a claim term.  “It is not enough for a patentee to simply disclose a single embodiment or use a word in the same manner in all embodiments; the patentee must ‘clearly express an intent’ to redefine the term.”  (slip op., p. 5, citations omitted). 

While there are no magic words with which an applicant must “clearly express an intent” to define a term, there is no substitute for phrases such as “‘Term’ is defined to mean…”.  After the applicant has acted as his or her own lexicographer for a claim term, “that definition will control interpretation of the term as it is used in the claim.”  (MPEP 2111.01(IV)).  While this can be limiting, it can also be powerful, as it removes claim interpretation from the Examiner and puts it in your hands.

There are interesting strategic implications that follow from acting as one’s own lexicographer.  For example, one could expressly define a term “widget” to have a particular meaning, such as “a longitudinally extending bar with a polygonal cross section.”  One independent claim might utilize the term “widget,” while another might claim in place of the term “widget” the actual definition of the term widget, or better yet a variant of that definition.  For example, claim 1 might claim a widget, while claim 10 might claim a longitudinally extending bar with a closed cross-sectional perimeter.  In this way, you can easily obtain claims of different scope, which has advantages both on offense and on defense.  Further, one can have the benefit of expressly defining a term in one claim in order to control its interpretation, and the benefit of using different words in another claim such that one is not limited to an express definition set forth in the specification.

Boiled down to a one-sentence summary, defining a term doesn’t mean you have to use that term in each claim, but it gives you the power to control interpretation of that term and the opportunity to vary the scope of the independent claims within a single patent to prevent the interpretation of the claims from being unduly limited.

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Comments»

1. Karen G. Hazzah - March 3, 2012

>expressly define a term “widget” to have a particular meaning,
>such as “a longitudinally extending bar with a polygonal cross >section.” One independent claim might utilize the term “widget,” >while another might claim in place of the term “widget” the actual >definition of the term widget,

But you’ve expressly defined your claim term … so wouldn’t these two claims have exactly the same claim scope?

>or better yet a variant of that definition. For example, claim 1
>might claim a widget, while claim 10 might claim a longitudinally >extending bar with a closed cross-sectional perimeter.

Now, the claim 10 “variant” certainly does have different scope.

Interesting approach. I think the typical approach is to come up with a term that covers both polygonal cross section and closed cross-section perimeter, and then use dependent claims to capture the distinction.

In this example, isn’t polygonal is a type of closed cross-section? Such that the typical approach would be independent claim to bar with closed cross-section and dependent to polygonal.

You’ve done something different: define a term that specifically covers the narrower embodiment.

Or was it just accident that your recite-the-defined-widget claim was a species of the recite-the-widget-properties genus claim?


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