The uncertainty as to whether claim interpretation decisions will survive appeal is an ever growing concern as the Federal Circuit’s reversal rate of lower court claim interpretations averages fifty percent. At a minimum, uncertainty in claim construction prolongs patent infringement disputes. Moreover, the reality is that many times it is the uncertainty of a claim’s scope and meaning that leads to litigation in the first place. In order to alleviate this stress on patentees, competitors and the federal court system, most if not all questions regarding the scope and meaning of claim terms should be clarified by the applicant during patent prosecution. The applicant should be required to specifically define the claim terms either by referencing a specific dictionary definition(s) or providing alternative, synonymous wording. Although these are steps that would likely occur during a Markman or claim construction hearing, taking preemptive action during prosecution will reduce the complexity of such hearings—if not eliminate the need for them altogether—and will assure that the scope and meaning of claim terms are readily apparent from the moment the applicant applies for a patent.
Robert H. Resis, Reducing the Need for Markman Determinations, 4 J. Marshall Rev. Intell. Prop. L. 53 (2004)