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The Intellectual Property StrategistFeaturesIntellectual PropertyPatent Licensing and TransactionsPatent Litigation

Federal Circuit Analyzes Specification and Prosecution History Claim Language Usage

By Matthew Siegal
August 01, 2022

Everyone knows that you interpret a patent's claims in light of the patent's specification and prosecution history. However, absent an express disclaimer or special definition of how a term is to be interpreted, it can be frustrating to get a court to reject the plain and ordinary meaning of claim language read in a vacuum, based on the subtleties of how a term is used in a patent or its prosecution history. The technology of patent examples can be complicated. The reasoning of why an amendment was made to overcome art can be elusive. Many courts would much rather look at a dictionary or textbook definition. The more nuanced analysis is often quite complex from either a scientific or patent prosecution context.

University of Mass. v. L'Oréal S.A., No. 2021-1969 (Fed. Cir. June 13, 2022), confirms that regardless of the complexity, a court must analyze how a term is used in the context of the specification and prosecution history, even without clear language such as "as used herein .…"

[E]ven if the meaning is plain on the face of the claim language, the patentee can, by acting with sufficient clarity, disclaim such a plain meaning or prescribe a special definition based on the context of how a word or phrase is used.

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