The author, a partner at Bryan Cave LLP, has obtained patents for clients in the biotech, chemical, electrical and mechanical fields and arbitrated disputes involving patents, trademarks, copyrights, and trade secrets. His practice also includes counseling, licensing, and due diligence projects. He is a registered patent attorney and holds undergraduate and graduate degrees in chemical engineering. Prior to entering into law practice, he worked as a computer programmer, a process engineer, and a consultant. The views expressed in this article are solely those of the author.
Resolving the issues of infringement and validity in a patent infringement suit requires knowing what the claims mean. The grounds for setting aside an arbitrator’s “claim construction” are much narrower than the grounds for setting aside a trial court’s claim construction. Thus, arbitrating claim construction significantly reduces the risk that the parties will have to retry infringement and validity issues because of an erroneous claim construction.
In a patent infringement suit, the patent owner has the burden of proving that the claims of the patent1 cover the allegedly infringing article2 or method, and the alleged infringer has the burden of proving its defenses, for example, that the claims are invalid because the patent does not satisfy the disclosure requirements for the claims,3 or the claims encompass (i.e., are “anticipated” by4) or are too close to (i.e., are “obvious” from5) the “prior art,”6 or for other reasons. All of this requires knowing what the claims mean.