I received two email responses to my post about Truth and Policy in construing patent claims.
From Josh Sarnoff at American University:
The question also is “which Truth”? Even when understood from the perspective of one skilled in the art, both the Federal Circuit and the Supreme Court have been conflicted as to whether the claim IS the invention or only REPRESENTS it. On this distinction, the “Policy” determinations regarding certainty and predictability for the public and fairness to inventor/owners are then hung (including whether the claims are limited by the specification and whether the patent is limited by the claims). Any neo-Platonists and inter-subjectivists out there to duke it out and give us the right answer?
And from Joe Miller at Lewis & Clark:
I agree that the court has shown it is of at least two minds when it comes to proper use of dictionaries, lay or technical, in the claim construction process. Phillips is thus a fine opportunity to develop a more stable consensus approach; let’s hope they make good use of it.
I don’t agree that the divide at work here is between Truth and Policy. (The Truth / Policy divide plays out, I think, in the Doctrine of Equivalents cases much more readily than in the claim construction cases.) Everyone on the court wants to find a reliable method for getting at the Truth, i.e., what a given claim means to a person having ordinary skill in the art. Where they appear to me to differ is in how much they want to link their Truth-obtaining claim construction methodology choices to a theory, express or implied, about how those choices will affect patent applicants’ incentives to write more-reliably-construed claims in the future. Let’s call this divide Ex Ante v. Ex Post. The judges who prefer a heavy presumption of ordinary meaning appear to think that this default rule gives patent applicants stronger encouragement to make intended departures from ordinary meaning more clear on the face of the patent itself. For what it’s worth, that is my own view of the benefit of a heavy presumption in favor of ordinary meaning. The judges who refer frequently to dictionaries as sources for learning about a word’s ordinary meaning appear to think that this move gives patent applicants stronger encouragement to consult those publicly available sources when they are drafting claims in the first place (rather than believe that an expert witness will be able to bail them out later). Again, for what it’s worth, that is my own view of the benefit of using dictionaries as a principal source (albeit by no means a perfect source) of evidence about ordinary meaning. Like you, I cast my lot with Truth. What’s more, I think the Ex Ante approach can help make claim construction much more predictable over time.
Let it never be said that copyright lawyers have all the fun in intellectual property law.