Book Review: Thesaurus of Claim Construction

Thesaurus of Claim Construction, by Stuart B. Soffer and Robert C. Kahrl, Oxford University Press, 2013

          I keep a few dog-eared reference books within arms reach of my computer and work area, including Pleading Causes of Action in Maryland, the Federal Rules of Civil Procedure, and a copy of the latest patent statute--the America Invents Act version.  When the good folks at Oxford University Press sent me their second edition of the Thesaurus of Claim Construction, now two volumes, I made room for it next to the others.  I wouldn't say the Thesaurus is indispensable, but using it is like consulting a trusted, experienced colleague down the hallway.  Not sure if "adapted to" or "attached" in a patent claim will become a problem later?  Check out the Thesaurus' summaries of how courts have construed those and similar terms before sending your final draft application to the client.  Chapter 1 contains a no frills "how to use this book" summary.  Chapter 2--"Outline of the Law of Claim Construction"--is a must read for anyone new to patent law (though even skilled practitioners will find its detailed and fully cited roadmap to the claim construction process helpful).

          Chapter 3 includes constructions for "simple terms," and the authors have included many, such as "3-D," "data point," and "storage."  But Chapter 3 also includes many more complex terms and phrases, such as "method for numerically representing objects in a computer database....," which the Northern District of California construed in 2011 in In Re: Google Litigation.  Exceeding one-thousand pages total, the patent practitioner is bound to find a term of interest in Chapter 3 that has previously been construed by a court.  While the context in which the terms were construed may be different than the practitioner's case, a previous court's interpretation should shed light on how the term might be construed by another court in the future.

          Chapter 4 includes an "Outline of the Law Construing Means Plus Function Elements."  Chapter 5 includes means-plus-function terms.

          Chapter 6 includes terms where "no construction was necessary." 

          Chapter 7 provides insight into construing design patent claims, which are in the form of a visual representation of the ornamental features of an invention.

          Finally, Chapter 8 concludes with a summary of how court's have defined the person of ordinary skill in the art--the hypothetical person who is presumed to have known the relevant art at the time of an invention--with regard to several dozen patents. 

          The Thesaurus of Claim Construction is co-authored by Stuart Soffer and Robert Kahrl.

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