Wednesday, January 26, 2011

Arlington: is the name of the game the claim?

Harold Wegner discussed the 20 Jan 2011 Arlington case on IPFrontline and concluded:

Until there is a final resolution of this debate there will never be clarity in claim construction at the Federal Circuit. No matter which side is correct in this debate, the more important point is that the debate should be fully aired and settled, one way or the other, for the sake of providing the trial courts a clear scheme for patent claim construction.

Of the dissent, the majority notes in a footnote:

The concurrence-in-part and dissent-in-part char-
acterizes the specification as the “heart of the patent”
and, using “colloquial terms,” states that “you should get
what you disclose.” This devalues the importance of claim
language in delimiting the scope of legal protection.
“Claims define and circumscribe, the written description
discloses and teaches.” Ariad Pharms., Inc. v. Eli Lilly &
Co., 598 F.3d 1336, 1347 (Fed. Cir. 2010) (en banc). To
use a colloquial term coined by Judge Rich, “the name of
the game is the claim.” Giles S. Rich, The Extent of the
Protection and Interpretation of Claims-American Perspec-
tives, 21 Int’l Rev. Indus. Prop. & Copyright L. 497, 499,
501 (1990). Indeed, unclaimed disclosures are dedicated
to the public. Johnson & Johnston Assocs. Inc. v. R.E.
Serv. Co., 285 F.3d 1046, 1051 (Fed. Cir. 2002) (en banc).


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