Jeremiah Helm and Sean Murray Discuss the Nuances of Claim Construction in Law360

In the latest installment of Knobbe Martens’ Law360 series on noteworthy Federal Circuit opinions, partners Jeremiah Helm and Sean Murray review a case that highlighted how one word can affect claim construction. The column focuses on Pacific Biosciences v. Personal Genomics, which resulted from two different inter partes reviews filed by PacBio against a Personal Genomics patent. Following review by the Patent Trial and Appeal Board (PTAB), some claims were deemed patentable, while others were deemed unpatentable. According to Helm and Murray, “Ultimately the key to the patentability determination came from the claim's preamble, which recited an ‘apparatus for identifying a single biomolecule.’"

On appeal, the Federal Circuit “started its analysis by noting that the outcome turned on the meaning of the word ‘single’” and “referred to this as a striking feature of the claim language,” explain the authors. Once the court established the scope of the word within the context of the claim, “it easily affirmed the board's factual findings both for and against patentability.”

Helm and Murray offer several takeaways for practitioners based on the outcome of Pacific Biosciences v. Personal Genomics. First, “even simple words, such as ‘single,’ may be dispositive, and thus disputed, in view of the specific context provided by the surrounding claim language.” They add, “the Federal Circuit is likely to affirm [factual] findings in view of the deferential standard of review.” Lastly, the authors note, “the Federal Circuit's decision emphasizes how claims directed to the capability of an apparatus may provide a patentable distinction, even if noted in the preamble.”

Read the full article here.