Developments in Claim Construction; Claim Construction after Lighting Ballast; plus Synchronizing Specification and Claims for Strong (Valid) Patents

Sessions 1: Developments in Claim Construction - Claim construction maintains its Copernican centrality to patent prosecution and litigation, displaying all the usual conundrums, inconsistencies and (seemingly) intractable contradictions which are its historic hallmarks. Added to this are two new factors—the presence of the PTAB and its claim construction practices (displayed principally through inter partes reviews), and the Federal Circuit’s long-expected attempt to "rethink" deference in light of Markman, as announced by Lighting Ballast, when claim constructions are reviewed on appeal. These events are reviewed and puzzled over, through attention to new/old/uncertain precedent and procedures for claim construction.

Session 2: Claim Construction after Lighting Ballast - Lighting Ballast has been taken up en banc by the Federal Circuit to address the Court's power to review patent claim construction appeals on a de novo basis. This presentation examines the highlights of the briefing and oral arguments and the potential impact of the decision.

Session 3: Synchronizing Specification and Claims for Strong (Valid) Patents - The inventor creates the invention. Who creates the claims? The inventor? The patent practitioner? Implicit in Federal Circuit decisions is that the Court is more confident that the inventor created the described embodiments/examples than the claims. If the claims reach too far beyond the disclosed embodiments/examples, the claims are often construed more narrowly than the ordinary meaning of the claims would suggest, or the claims are held invalid for lack of written description support. This presentation provides an in-depth look at what needs to be done with patent specifications so that broad claims are interpreted broadly and found to be valid.

Includes: Audio Paper Slides