Patent Claim Interpretation Methodologies and Their Claim Scope Paradigms

ABSTRACT The optimal scope of patent protection is an issue with which patent system observers have struggled for decades. Various patent doctrines have been recognized as tools for creating specific patent scopes and, as a result, implementing specific patent theories. One area of patent law that has not been addressed in the discussion on patent scope and theories is patent claim interpretation. This omission is particularly noteworthy because of the substantive role patent claims and the interpretation thereof play in the patent system, namely the framing of questions of patent infringement and validity. This Article will explore the not-yet-discussed relationship between claim interpretation methodology and patent scope. The discussion will focus on how changes in interpretation methodology affect patent scope, an aspect of methodologies that the Article identifies as their "claim scope paradigm." Introducing the claim scope paradigm concept is mainly beneficial for two reasons. First, identifying the claim scope paradigm allows different interpretation methodologies to be evaluated as to their impact on the substantive function of patent claims. A claim scope paradigm criterion represents a significant and worthwhile departure from the current standard of certainty used by courts and commentators. Second, recognizing claim scope paradigms facilitates the use of claim interpretation methodology as a patent policy lever. Interpretation methodologies can be highly effective levers, having the ability to inject patent policy at the most basic level of the patent process. INTRODUCTION I. FUNCTIONS OF PATENT CLAIMS A. Public Notice Function B. Patent Scope Defining Function II. PATENT CLAIM INTERPRETATION METHODOLOGIES A. Claim Interpretation Basics 1. Interpretative Sources 2. Canons of Interpretation B. Common Variation Among Methodologies: The Degree of Influence of the Specification 1. Patent Specification 2. Use of the Specification in Claim Interpretation C. Majority and Dissent in the Phillips v. AWH Corporation Panel Decision: An Example of Two Different Claim Interpretation Methodologies 1. The Majority's Methodology's Full and Early Use of the Specification 2. The Dissent's Methodology's Heavy Presumption in Favor of Dictionaries D. En Banc Decision in Phillips v. AWH Corporation: The Federal Circuit Selects a Claim Interpretation Methodology III. EVALUATING CLAIM INTERPRETATION METHODOLOGIES A. Need for Evaluation Criteria B. Certainty as an Evaluation Criterion C. Shortcomings of Certainty as a Criterion IV. A NEW EVALUATION CRITERION: A METHODOLOGY'S CLAIM SCOPE PARADIGM A. Identification of an Interpretation Methodology's Claim Scope Paradigm 1. Claim Scope Paradigm of the Specification Methodology 2. Claim Scope Paradigm of the Heavy Presumption Methodology B. Evaluating Claim Interpretation Methodologies Based on Their Claim Scope Paradigm 1. Competitive Innovation Theory Supports the Selection of the Specification Methodology 2. Prospect Theory (Possibly) Supports the Selection of the Heavy Presumption Methodology C. Benefits to Using Claim Scope Paradigm as a Criterion 1. Claim Scope Paradigm Addresses a Methodology's Effect on the Substantive Function of Patent Claims 2. Recognizing that the Claim Scope Paradigm Facilitates Using Claim Interpretation Methodology as a Highly Effective Patent Policy Lever CONCLUSION INTRODUCTION The optimal scope of patent protection is an issue with which patent system observers have struggled for decades. (1) With any invention, considerations turn to what aspects of the invention deserve to be protected and are therefore patentable. …