Jenner & Block

“Words Method vs. Invention Method of Claim Construction,” American Bar Association Intellectual Property Litigation Newsletter

In this article, Jenner & Block Partner Bradford P. Lyerla discusses one of the most persistent and pernicious problems in patent litigation, namely, claim construction.  He notes that patent litigators know that claim construction is unpredictable in the trial courts and the rate of reversal in the court of appeals is too high.  Mr. Lyerla compares the two competing methods for doing claim construction, the “invention” method versus the “words” method.  He observes that both methods are used by members of the Federal Circuit and by trial judges, there is little predictability as to which method will be used in which situation, and the choice can lead to “dramatically different outcomes in litigation.”  The article discusses the advantages and disadvantages of each method and offers “practical tips” for how litigators can use their understanding of the two.  Finally, Mr. Lyerla expresses the hope that “after simmering for years, it may now be that the core problem in claim construction is coming into sharp focus for review” by the Federal Circuit.