Procedural versus Holistic: Understanding Claim Construction Methodology
The Claim Construction Project uses as its measurement device the methodological approach used to construe contested elements of patent claims. The study identified two broad approaches to this process:
The PROCEDURAL Approach
The procedural approach is characterized by adherence to a relatively strict rules-based hierarchy of interpretive sources, with a particular emphasis on the ordinary meaning of disputed patent claim language.
The HOLISTIC Approach
The holistic approach is a far less-structured analysis, utilizing the array of possible interpretive information in a flexible, case-specific fashion.
Within these broad approaches are three sub-categories, indicating the strength of the form of the approach. This yields a taxonomy of methodological approach as follows:
For the Claim Construction Project, each case in the data set was coded according to which of the six categories it corresponded to. This coding strategy then allowed for data on both the general methodological approach (holistic or procedural), as well as the strength of the form (strong, intermediate, weak).
The following table offers some additional details about each category, as well as links to some example cases.
|Form||Description||Examples (click for case)|
|Ps||Expresses rigid process; Ordinary meaning controls, absent express definitions, etc.||
Johnson Worldwide Assocs. v. Zebco Corp., 175 F.3d 985(Fed. Cir. 1999)
Neomagic Corp. v. Trident Microsystems Inc., 87 F.3d 1062 (Fed. Cir. 2002)
CCS Fitness Inc. v. Brunswick Corp., 309 F.3d 1373 (Fed Cir. 2002)
|Pi||Framework of formal process established; Departure along some dimension: no talk of presumption, extensive discussion of specification.||
Insituform Techs. v. Cat Contr., 99 F.3d 1098 (Fed. Cir. 1996)
Micro Chem. Inc. v. Great Plains Chem. Co., 194 F.3d 1250 (Fed. Cir. 1999)
3M v. Chemque Inc., 303 F.3d 1294 (Fed. Cir. 2002)
|Pw||Difficult to discern the form of analysis. Some discussion/hint of process.||
Ethicon Endo-Surgery v. United States Surgical Corp., 93 F.3d 1572 (Fed. Cir. 1996)
Key Pharms. v. Hercon Lab. Corp., 161 F.3d 709 (Fed. Cir. 1998)
Brassica Protection Products LLC v. Sunrise Farms, 301 F.3d 1343 (Fed. Cir. 2002)
|Hw||Difficult to discern the form of analysis. Little or no discussion of process or ordinary meaning.||
Litton Sys. v. Honeywell Inc., 87 F.3d 1559 (Fed. Cir. 1996)
DSC Communs. Corp. v. Pulse Communs. Inc., 170 F.3d 1354 (Fed. Cir. 1999)
Viskase Corp. v. American Nat'l Can Co., 261 F.3d 1316 (Fed. Cir. 2001)
|Hi||Acknowledgement of process, but not used. Specification/prosecution history is clearly dispositive.||
Harris Corp. v. IXYS Corp., 114 F.3d 1149 (Fed. Cir. 1997)
Aqua-Aerobic Sys. v. Aerators Inc., 211 F.3d 1241 (Fed. Cir. 2000)
Smith & Nephew Inc. v. Ethicon Inc., 276 F.3d 1304 (Fed. Cir. 2002)
|Hs||No discussion of process. Immediate use of specification or prosecution history.||
O.I. Corp. v. Tekmar Co., 115 F.3d 1576 (Fed. Cir. 1997)
Wang Lab. Inc. v. America Online Inc., 197 F.3d 1377 (Fed. Cir. 1999).
Cultor Corp. v. A.E. Staley Manufacturing Co., 224 F.3d 1328 (Fed. Cir. 2000)
Examples of the Methodology in Action
The following excerpt, from Johnson Worldwide v Zebco, Inc., 175 F.3d 985 (Fed. Cir. 1999), is an example of the 'strong procedural' approach to claim construction:
We begin, as with all claim interpretation analyses, with the language of the claims. The general rule is, of course, that terms in the claim are to be given their ordinary and accustomed meaning. General descriptive terms will ordinarily be given their full meaning; modifiers will not be added to broad terms standing alone. In short, a court must presume that the terms in the claim mean what they say, and, unless otherwise compelled, give full effect to the ordinary and accustomed meaning of claim terms.
In order to overcome this heavy presumption in favor of the ordinary meaning of claim language, Ķ. there must be a textual reference in the actual language of the claim with which to associate a proffered claim construction.
Our case law demonstrates two situations where a sufficient reason exists to require the entry of a definition of a claim term other than its ordinary and accustomed meaning. The first arises if the patentee has chosen to be his or her own lexicographer by clearly setting forth an explicit definition for a claim term. The second is where the term or terms chosen by the patentee so deprive the claim of clarity that there is no means by which the scope of the claim may be ascertained from the language used. In these two circumstances, a term or terms used in the claim invites--or indeed, requires--reference to intrinsic, or in some cases, extrinsic, evidence to determine the scope of the claim language.
The following excerpt, from Wang Laboratories v. America Online, is an example of the 'strong holistic' approach to claim construction:
The parties agreed before the district court that the term "frame" can in general usage be applied to bit-mapped display systems as well as to character-based systems; experts for both sides so testified. The disagreement was as to whether the term "frame" in the '669 claims embraced this general usage, or whether the term would be understood by persons of skill in this field as limited to the character-based systems described in the '669 patent. The district court started its analysis with the specification.
* * *
The only system that is described and enabled in the '669 specification and drawings uses a character-based protocol. The specification mentions non-character-based protocols, [but] [t]he district court viewed the references to bit-mapped protocols as acknowledgments of the state of the art, and not as an enlargement of the invention described in the patent. We agree, and conclude that the references to other known protocols do not describe them as included in the applicant's invention, and that the specification would not be so understood by a person skilled in the field of the invention.
* * *
Wang states that the character-based protocol is simply a "preferred embodiment," and that the embodiment described in the specification does not set the boundaries of the claims . . . [a]lthough precedent offers assorted quotations in support of differing conclusions concerning the scope of the specification, these cases must be viewed in the factual context in which they arose. Whether an invention is fairly claimed more broadly than the "preferred embodiment" in the specification is a question specific to the content of the specification, the context in which the embodiment is described, the prosecution history, and if appropriate the prior art, for claims should be construed, when feasible, to sustain their validity. The usage "preferred" does not of itself broaden the claims beyond their support in the specification. The only embodiment described in the '669 patent specification is the character-based protocol, and the claims were correctly interpreted as limited thereto.
It is this contrastbetween the procedural and the holistic methodological approachesthat forms the basis of our measurement criteria.
Does Methodology Matter?
One question that often comes up is whether the different approaches to claim construction real matter - would they really yield different results in the same case? The short answer is 'yes': the methodological approach clearly matters to the result of the claim construction analysis (and thus, often, the case itself). Consider the following:
- There is universal agreement among patent lawyers, scholars, and observers that claim construction is perhaps the single most crucial factor in patent disputes, and that different approaches yield different results.
- The procedural/holistic dichotomy is drawn from the jurisprudence itself - this is what litigants argue about. A typical description of this area is that there are 'two lines of cases.'
- Disputes among Federal Circuit judges concerning claim construction (i.e., where there was a dissent or concurring opinion disputing the majority's claim construction) tracked the procedural/holistic distinction 95% of the time in the data set.
- Federal Circuit reversals of District Courts' claim construction analyses tracked the procedural/holistic distinction 82% of the time.
More Information . . .
For more information about how opinions are categorized in this project, see our "Coders' Guide to the Claim Construction Project".