How In-house Counsel Conquer Claim Construction Hearings

Before going to trial for an infringement case, a defendant must go through the claim construction process to determine what the patent’s claims mean. Managing Intellectual Property contacted Finnegan partner James Barney to discuss the best strategies for navigating the claim construction process.

During the prosecution process, the parties should keep in mind which patent formats will be viewed as more favorable. James explained that parties have moved away from means-plus function claiming, which describes the functionality of an innovation. This claim structure could narrow the claims or invalidate them. He suggests that patent prosecutors should consider whether the claim is vulnerable to being interpreted in different ways and the potential effect of those interpretations.

James continued to explain that in litigation, claim construction should be neutral. The defendant should refrain from forcing a claim construction that is geared towards a non-infringement argument. He explained that there are instances in which there are two reasonable interpretations for claims. In these instances, it is in the defendant’s favor to advocate for the interpretation that best supports their argument.

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