Looking at Patent Law: Defining the Meaning and Scope of Claims through Claim Construction; Insights from the Lithium Battery Patent Infringement Case

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In this installment of the “Looking at Patent Law” series, we discuss the legal basis for determination of the meaning and scope of patent claims. The process begins with the inventor and the inventor’s interaction with patent council in drafting the patent application. Further clarification is added during the interaction of the inventor/patent attorney and the USPTO examiner during the prosecution of the patent application. A 1996 Supreme Court ruling stated that the determination of the meaning and scope of claims is a matter of law and decided by the courts. Consequently, patent infringement cases consist of two steps: 1.) determination of the meaning and scope of the claims during a Markman hearing (named after the Supreme Court case), followed by 2.) a jury trial deciding infringement. We conclude this article with a review of the Markman hearing in a lithium battery patent infringement case. With this article, we hope to demystify the patent claiming and interpretation process and better prepare electrochemical and solid state scientists, engineers, and technologists to interact with their patent counsel regarding their inventions.