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Mar 23, 2006


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Other than "rigid," it looks as though the CAFC construed every term that the parties asked for. I'm not sure that that undercuts "the promise of Markman."

The wishy-washy language and the koan are really strange and disappointing, but the ultimate holding doesn't look so bad, unless I'm missing something.

In response, Robert Groover of Groover & Holmes ( provided the following "Haiku'd Koan Headnote" reflecting on the Wilson Sporting Goods decision:

Court can't construe claim
in light of besmirched device:
context darkly guides.

Looks like some CAFC judges talk to each other, but your contributors don't: the decision in Wilson (Lourie, Rader & Bryson) was foreshadowed in footnote 10 in the previous day's Exigent Technology case (Gajarsa, Dyk & Prost): "it is appropriate for the court to consider the accused device when determining what aspect of the of the claim should be construed", among other quotes.

Dan, I think that you would agree that considering accused devices to determine what claim terms should be construed is quite different from needing to see the accused device to determine the meaning of those terms.

I think Rader's parenthetical summary of SRI v. Matsushita is not an esoteric koan, but something rather more mundane--a typo. Here is the sentence from SRI that Rader appears to be paraphrasing: "It is only after the claims have been construed without reference to the accused device that the claims, as so construed, are applied to the accused device to determine infringement." Given that Rader underlined the first occurence of "construed" in his parenthetical, I think he meant to distinguish it from "applied" which is what the second occurrence of "construed" was meant to be.

When we (Australians) interview a witness for the purpose of establishing claim construction, we would not necessarily be concerned whether or not that witness had knowledge of the "accused device". However, that witness would forever be tainted for the purpose of establishing obviousness. Here, it is important not to blur the line between establishing a meaning of a claim and testing for obviousness. A court, not being a person skilled in the art, can certainly decide, with optional witness evidence, what a claim means. As for obviousness, the court is simply not permitted to decide that without witness evidence.

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