The Art of the Claim
The property rights of a patent are determined by its claims, which are required to “particularly point[] out and distinctly claim[] the subject matter which the inventor or a joint inventor regards as the invention,” 35 USC 112(b). The meaning and scope of claims for infringement purposes are determined by a court in a process known as “claim construction.” Clarity and construction were at issue in a recent Federal Circuit case, Vascular Solutions, LLC v. Medtronic, Inc., No. 2024-1398 (Fed. Cir. Sept. 16, 2024).
The patents at issue in Vascular Solutions involved a coaxial extension catheter deliverable through standard guide catheters, using a guidewire rail segment. The extension catheter includes a “substantially rigid portion,” which is the feature at the heart of the case. In some claims the substantially rigid portion is recited as having a partially-cylindrical opening in it, while in other claims the partially-cylindrical opening is recited as being in a segment of the catheter that is recited separately from the substantially rigid portion.
Given those different ways of reciting the claimed device, the patentee ended up arguing for a claim construction in which the term phrase “substantially rigid portion” would be interpretated differently in different of the claims. The district court opined that this construction would result in a single device simultaneously infringing different and mutually exclusive claims, and ultimately concluded that the claims at issue were indefinite for lacking the requisite clarity, and thus were invalid.
The Federal Circuit reversed, and directed the district court to construe the claims on a claim-by-claim basis, stating that the “art of claiming sometimes involves drafting claims in a variety of ways to encompass the disclosed matter,” which is permissible as long as the claims themselves provide reasonable certainty regarding their scope. Although there is a preference for consistency in claim interpretation across claims in the same patent and different related patents, the phrase “substantially rigid portion” is functional language, and must be interpreted in light of the function that it is to achieve. That function may make for variations for different claims in the length of the catheter that is considered the “substantially rigid portion.”
When it comes to art of claim drafting, don’t rely on the patent attorneys of just any patent firm; ask them to show you the Monet. At Renner Otto we know how to put pen to paper (the paint and canvas of claims drafting) to draw beautiful pictures of a wide variety of inventions.