by Stan Hammer
It is well-established that in construing the claims of a patent, courts must first look to the intrinsic record, including the language of the claims themselves, the written description, drawings, and prosecution history. Where the intrinsic record is ambiguous, courts may resort to extrinsic evidence—that is, all evidence outside of the patent and its prosecution history, including testimony from experts and the inventor, dictionaries, and treatises. Regarding inventor testimony, the Federal Circuit has cautioned that “the testimony of an inventor . . . often is a self-serving, after-the-fact attempt to state what should have been a part of his or her patent application.” Bell & Howell Document Mgmt. Prod. Co. v. Altek Sys., 132 F.3d 701, 706 (Fed. Cir. 1997) [an enhanced version of this opinion is available to lexis.com subscribers].
In a recent memorandum opinion, Judge Payne addressed the admissibility of inventor testimony when a patent infringement plaintiff submitted a claim construction declaration of the inventor in support of its positions on claim construction. Tax-Right, LLC v. SICPA Prod. Sec. LLC, No. 3:12-CV-657, 2013 U.S. Dist. LEXIS 100746 (E.D. Va. July 18, 2013) [enhanced version]. Citing the Federal Circuit’s concerns that inventor testimony is often a self-serving attempt to retroactively define claim terms, SICPA sought to strike the inventor’s declaration on the ground that it consisted of the inventor’s “unsupported and uncorroborated subjective opinion of what [the inventor] recalls he thought his invention was and what he meant when he used certain terms.” Tax-Right responded that the issue was not whether the inventor’s declaration was admissible, but rather how much weight it should carry, arguing that the issue was not “whether . . . the [inventor’s] declaration and testimony are necessary to the claim construction issues. Rather the issue is if it is proper for the Court to exclude them.”
Judge Payne agreed with Tax-Right. While “it may well be the case that [the inventor’s] declaration and testimony are of little use to the Court in construing the claims,” and Judge Payne noted he might not even find it necessary to consider such extrinsic evidence, it was admissible. The question was one “of weight and not of admissibility,” and “as the Federal Circuit has noted, the Court is not unfamiliar with weighing testimony.”
Judge Payne also rejected SICPA’s alternative request for the Court to find that the inventor had waived attorney-client privilege with respect to communications with his patent counsel under the “at issue” waiver doctrine. Under that doctrine, waiver occurs where a declaration “places at issue the subject matter of a privileged communication in such a way that the party holding the privilege will be forced to draw upon the privileged material at trial in order to prevail.” In re Lott, 424 F.3d 446, 453 (6th Cir. 2005) [enhanced version]. Given that the declaration’s only reference to patent counsel was to the fact that “when [the inventor] worked with [patent counsel] to draft the Tax-Right patent, [the inventor] realized that people might interpret the word ‘order’ differently,” Judge Payne found no waiver. In Judge Payne’s estimation, such a reference did not place the advice of the attorney in issue, and did not appear to be an attempt by the inventor to disclose favorable communications while asserting the privilege over less favorable ones.
Read more at Virginia IP Law by Troutman Sanders LLP.
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