This post originally appeared at Greenspoon Marder’s Intellectual Property blog.


As a lawyer that practices patent law, I am often reminded of the “it’s only words” refrain from the Bee Gees song “Words.” This is odd, and potentially treacherous, for several reasons. First, just like admitting you will vote for Trump is decried by the political establishment intelligencia, admitting that you are a fan of the Bee Gees invites scorn from many “serious” musicians or “classic rock & roll” fans (I grew up a Led Zeppelin fan, not a Bee Gees fan – I swear, I swear).

Second, one should not be distracted by the pedestrian lyrics of such a simple song when trying to understand the complexities and intricacies of a genius mind (the inventor) captured in the four corners of the patent document.

Third, when performing a utility patent claim construction analysis, rather than “take my heart away,” we need to understand those words in the much broader context of patent eligibility and patentability (utility, novelty and non-obviousness) and potential patent infringement: a utility patent’s validity, and infringement.

Nevertheless, we are constrained by the words of the patent document when called upon to interpret what it is that the inventor had in mind with his/her invention. And, when it is time to convey that meaning to a Judge or Jury of our peers (i.e., laypersons), we once again must rely upon the essential tool of the trade: the words in the four corners of the patent document. However, and this is where the patent lawyer, Judge and Jury dilemma comes in, we must rely upon the meaning of those words as understood or intended by the inventor at the time of his/her invention by, you guessed it, other words.

So when interpreting patent claims, rather than allowing the words to “take your heart away,” employ the following approach:

1. In spite of the abundance of words that appear in the patent specification (which must be relied upon to inform the meaning of the words in the claims), avoid the feeling that the inventor is just trying to “Ramble On.”

2. Avoid your own Monday morning quarterbacking (realizing that the words should be interpreted as understood at the time of the application). So, do not apply today’s standards of “What Is And What Should Never Be.”

3. Make sure that you are able to fluently convey the claim construction in a clear, concise, and credible way so as to avoid any “Communication Breakdown.”

4. If you find that you, or the Judge, or Jury might be “Dazed and Confused” by the patent specification, employ an expert to assist in the process.

5. Always remember to review the file history of the patent and its family to confirm that there is no file history estoppel “Heartbreaker.”

6. Think of your claim construction as a journey, taken one word at a time, as you climb the “Stairway to Heaven.”

7. Succeed at your Markman Claim Construction Hearing and your client will likely display their joy with a “Whole Lotta Love.”

8. Win the infringement battle with your successful claim construction, and your client will shower you with an overwhelmingly enthusiastic “Thank You” (until they receive your bill).

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