A PhD-holding patent prosecutor and a seasoned ITC and district court litigator talk claim construction. Can they possibly find common ground? In this episode of the EXCLUSIVE RIGHTS: Intellectual Property podcast,  Drew DeVoogd and  Todd B. Buck, PhD, discuss the challenges of claim construction, offering the different perspectives of the patent prosecutor, who develops claims, and the litigator, who may be arguing the same claims many years later. Perspective is everything — well, aside from the varying methods of interpretation by the courts.

Our hosts discuss a number of significant developments and issues related to claim construction:

  • How SCOTUS defined claim construction in Markman, and how district courts, the ITC, and the CAFC appear to be interpreting that decision differently
  • The "Russian doll" problem — construction of the construction of the construction of claims
  • When Markman goes bad — how Markman opinions can create poorly construed claims that challenge both parties in a litigation
  • The potential for misalignment of interests in developing claims with respect to protecting an innovation versus using the same claims in future efforts to litigate the patent
  • Benefits of the different strategies for claims definition used by opposing parties in a litigation
  • Does every disputed term really need a particularized definition?

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