November 22, 2011

In this article, Jenner & Block Partner Bradford P. Lyerla compares the two “fundamentally different ways of construing the claims of a patent,” that is, the “invention method” versus the “words” method.  He discusses the advantages and disadvantages of each and suggests that, because both are employed regularly by trial judges, understanding the root of the uncertainty can help practitioners “better navigate” the inconsistency and unpredictability of claim construction and explain it to their clients.  He notes that a judge’s predilection for one construction over another is often well-known and recommends that an attorney’s arguments should be geared toward the approach favored by the judge hearing the case.  Finally, he suggests that policymakers should be involved in efforts to make claim construction better by choosing which method is primary.