Re: Re apatentlawyer (Apl)....DDiligen...... al.. readable version..
in response to
by
posted on
May 20, 2007 11:08AM
Ths artical linked below gave thorough analysis on the issue. Vitronics case is not the model case followed by most cases after Markman. It may well be the most extreme example of court opinions what minimize the value/usefulness of extrinsic evidence, as indicated by the author.
Here are some quote from this artical -
"The Markman decisions, however, did not
actually prevent a party’s use of extrinsic evidence to show how the skilled
artisan would construe the claims.7 Thus, the outright ban,
seemingly championed by Vitronics, on extrinsic evidence where the
intrinsic evidence purportedly sufficed to construe the claims, may have
unwittingly gone beyond the holdings in the Markman decisions. Indeed,
Federal Rule of Evidence 702 provides that expert testimony is admissible to
educate the court, and the Supreme Court has cautioned against rigid rules for
excluding expert testimony emphasizing that, as gatekeeper, the trial court is
given broad latitude to determine how much weight should be accorded to
relevant expert testimony.8 Not surprisingly, other panels of the
Federal Circuit instinctively were compelled to modify Vitronics’ rigid
rule of construction.9 Given that trial judges, absent guidance, are
not in a position to understand how the skilled artisan would interpret
contested claim terms, a rule limiting the evidence that judges may receive has
not been well-received.10"
"Vitronics does not prohibit courts from examining extrinsic
evidence, even when the patent document is itself clear...Moreover, Vitronics
does not set forth any rules regarding the admissibility of expert testimony
into evidence. Certainly, there are no prohibitions in Vitronics on
courts hearing evidence from experts. Rather, Vitronics merely warned
courts not to rely on extrinsic evidence in claim construction to contradict
the meaning of claims discernible from thoughtful examination of the claims,
the written description, and the prosecution history--the intrinsic evidence
... '[Expert] testimony [on the proper construction of a disputed claim term]
may only be relied upon if the patent documents, taken as a whole, are
insufficient to enable the court to construe disputed claim terms. Such
instances will rarely, if ever, occur.' Thus, under Vitronics, it is
entirely appropriate, perhaps even preferable, for a court to consult
trustworthy extrinsic evidence to ensure that the claim construction it is
tending to from the patent file is not inconsistent with clearly expressed,
plainly apposite, and widely held understandings in the pertinent technical
field.12"
"Extrinsic Evidence
Accordingly, if desired, extrinsic evidence should be offered to the trial
judge, at least to influence the claim construction decision with the goal of
ensuring that the court-ordered claim construction is not completely at odds
with the understanding of the skilled artisan."