I am grateful to Messieurs Jeff Steck and Dennis Crouch of Patently-O for bringing the very recent decision of the US Court of Appeals for the Federal Circuit in Wilson Sporting Goods v. Hillerich & Bradsby (Fed. Cir. 2006, 05–1103) to my attention. As everyone in the United Kingdom knows, it has been settled since Nobel v Anderson (1894) 11 RPC 523, patent claims are to be construed as if the defendant had never been born.
It seems from Jeff Steck’s post on Patently-O “Construing Claims “Without Reference to the Accused Device” Is Put to the Test” that there was a similar rule in the USA but in Wilson the Court of Appeals for the Federal Circuit sought to refine it. The refinement seems to be very much along the lines adopted by our Court of Appeal in Lux Traffic Controls v Pike Signals  RPC 107, 127. In the words of Lord Justice Aldous:
“A claim of a patent should be construed as at the date of publication of the patent and without reference to the alleged infringement. However it is convenient to consider the questions of construction in the context in which they arose and therefore I pass to infringement.”
When one thinks about it, that is only common sense. Folk must know what the alleged infringement is in order to focus on the issue in hand.
Circuit Judge Rader (roughly the equivalent of a Lord Justice) said at page 7 of his judgment:
“While a trial court should certainly not prejudge the ultimate infringement analysis by construing claims with an aim to include or exclude an accused product or process, knowledge of that product or process provides meaningful context for the first step of the infringement analysis, claim construction.”
Towards the end of his judgment in Wilson, his lordship restated and reinforced the principle:
This court, of course, repeats its rule that “claims may not be construed with reference to the accused device.” NeoMagic Corp. v. Trident Microsystems, Inc., 287 F.3d 1062, 1074 (Fed. Cir. 2002); SRI Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1118 (Fed. Cir. 1985) (en banc). As noted earlier, that rule posits that a court may not use the accused product or process as a form of extrinsic evidence to supply limitations for patent claim language. Thus, the rule forbids a court from tailoring a claim construction to fit the dimensions of the accused product or process and to reach a preconceived judgment of infringement or noninfringement. In other words, it forbids biasing the claim construction process to exclude or include specific features of the accused product or process. The rule, however, does not forbid awareness of the accused product or process to supply the parameters and scope of the infringement analysis, including its claim construction component. In other words, the “reference” rule accepted in Pall Corp., Multiform Dessicants, and Scripps Clinic does not forbid any glimpse of the accused product or process during or before claim construction. ……. In light of these principles, if the litigants cannot themselves inform a trial court of the specific issues presented by the infringement inquiry—that is, issues of the breadth of the claim construction analysis and the most useful terms to facilitate that defining process—then a trial court may refer to the accused product or process for that context during the process.”
Jeff Steck was not too impressed by that reasoning: “Hoping, perhaps, that contradiction would prove more enlightening than troublesome, the court restated the relevant law on claim construction in a form more characteristic of a koan than a rule of law.” Having mastered from Improver the meaning of synecdoche and metonymy our skilled addressee now has to familiarize himself with a concept of a Buddhist dialectic. He added: “The district court had given hope to the promise of Markman: an infringement allegation was resolved with no need for a costly trial, or even summary judgment proceedings; the Federal Circuit’s remand showed that promise to be illusory.” I beg to differ. I don’t think the approach mandated by the Court of Appeals for the Federal Circuit will allow bad cases to be run. That does not appear to have happened here.
The judgment is not too long and well worth reading if only to marvel at the invention. As Jeff Steck put it the patent was for “a non-traditional softball bat that is best described as being “corked” with, essentially, a beer can.” Softball for those who have never been to America is a game like rounders. Don’t ask me to explain it or, indeed, the rules of any American sport. It is easier to discuss koans.