Lately all of claim construction in Markman ruling are referring to Phillips case law .

Following is the latestMarkman ruling by judge Stark forWyett, LLC , vs Intervert ,Inc

Claim construction issues regarding porcine circovirus vaccine patents

Wyeth ,LLC vs Intervet, Inc /Schering - Plough

http://depatentlaw.morrisjames.com/uploads/file/09%20161%20630.pdf

Judge Stark : C.A. No. 09-161-LPS, March 22, 2011

The court issues a claim construction ruling.

The seven disputed patents relate to porcine circovirus vaccines.Briefing on claim construction was completed October 29, 2010.A Markman hearing was held November 9, 2010.Ninety claims are asserted against defendant, but only three groups of terms are submitted for construction.The court finds that “vaccine” and “encodes” need no further construction

Excerpts from Markman Ruling:

LEGAL STANDARDS

"It is a bedrock principle ofpatent law that the claims of a patent define the invention to which the patentee is entitled the right to exclude." Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (internal quotation marks omitted). Construing the claims of a patent presents a question oflaw. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 977-78 (Fed. Cir. 1995), ajf'd, 517 U.S. 370, 388-90 (1996). "[T]here is no magic formula or catechism for conducting claim construction." Phillips, 415 F.3d at 1324. Instead, the court is free to attach the appropriate weight to appropriate sources "in light of the statutes and policies that inform patent law." Id.

"[T]he words of a claim are generally given their ordinary and customary meaning ... [which is] the meaning that the term would have to a person ofordinary skill in the art in question at the time of the invention, Le., as of the effective filing date of the patent application." Id. at 1312-13 (internal citations and quotation marks omitted). "[T]he ordinary meaning of a claim term is its meaning to the ordinary artisan after reading the entire patent." Id. at 1321 (internal quotation marks omitted). The patent specification "is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).

While ''the claims themselves provide substantial guidance as to the meaning of particular claim terms," the context of the surrounding words of the claim also must be considered.

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Phillips, 415 F.3d at 1314. Furthermore, "[o]there claims of the patent in question, both asserted

and unasserted, can also be valuable sources ofenlightenment ... [b ]ecause claim terms are

normally used consistently throughout the patent ...." Id. (internal citation omitted).

It is likewise true that "[d]ifferences among claims can also be a useful guide .... For example, the presence ofa dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim." Id at 131415

(internal citation omitted). This "presumption is especially strong when the limitation in dispute is the only meaningful difference between an independent and dependent claim, and one party is urging that the limitation in the dependent claim should be read into the independent claim." SunRace Roots Enter. Co., Ltd. v. SRAM Corp., 336 F.3d 1298, 1303 (Fed. Cir. 2003).

It is also possible that "the specification may reveal a special definition given to a claim tenn by the patentee that differs from the meaning it would otherwise possess. In such cases, the inventor's lexicography governs." Phillips, 415 F.3d at 1316. It bears emphasis that "[e]ven when the specification describes only a single embodiment, the claims of the patent will not be read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope using words or expressions ofmanifest exclusion or restriction." Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (internal quotation marks omitted), aff'd, 481 F.3d 1371 (Fed. Cir. 2007).

In addition to the specification, a court "should also consider the patent's prosecution history, ifit is in evidence." Markman, 52 F.3d at 980. The prosecution history, which is "intrinsic evidence," "consists of the complete record of the proceedings before the PTO [Patent and Trademark Office] and includes the prior art cited during the examination of the patent."

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Phillips, 415 F.3d at 1317. "[T]he prosecution history can often inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be." Id

A court also may rely on "extrinsic evidence," which "consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises." Markman, 52 F.3d at 980. For instance, technical dictionaries can assist the court in determining the meaning of a term to those of skill in the relevant art because such dictionaries "endeavor to collect the accepted meanings of terms used in various fields of science and technology." Phillips, 415 F.3d at 1318. In addition, expert testimony can be useful "to ensure that the court's understanding of the technical aspects of the patent is consistent with that

I ofa person of ordinary skill in the art, or to establish that a particular term in the patent or the prior art has a particular meaning in the pertinent field." Id Nonetheless, courts must not lose

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I sight of the fact that "expert reports and testimony [are] generated at the time of and for the purpose of litigation and thus can suffer from bias that is not present in intrinsic evidence." Id 1 Overall, while extrinsic evidence "may be useful" to the court, it is "less reliable" than intrinsic

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evidence, and its consideration "is unlikely to result in a reliable interpretation of patent claim scope unless considered in the context of the intrinsic evidence." Id at 1318-19.

Finally, "[t]he construction that stays true to the claim language and most naturally aligns with the patent's description of the invention will be, in the end, the correct construction." RenishawPLCv. MarpossSocieta'perAzioni, 158F.3d 1243, 1250(Fed.Cir.1998). It follows that "a claim interpretation that would exclude the inventor's device is rarely the correct

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interpretation." Osram GmbHv. Int'l Trade Comm'n, 505 F.3d 1351, 1358 (Fed. Cir. 2007).

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I Thus, if possible, claims should be construed to uphold validity. See In re Yamamoto, 740 F.2d

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1569, 1571 (Fed. Cir. 1984).