What Strategies Have Emerged from Recent Case Law?
From the perspective of the patent infringement defendant, the above case law has
presented additional strategic options. In the past, a patent infringement defendant primarily
argued for a narrow claim construction in order to set up a non-infringement summary
judgment motion. If the defendant was unsuccessful at having the court construe the patent
claims narrowly, the defendant was left with trying to invalidate a patent at trial. This is
generally a tall order unless there is a fairly clear argument that the claims lack novelty.
In light of the recent validity-related case law, however, the patent infringement
defendant now has a choice either to set up a non-infringement summary judgment motion or
to set up an invalidity summary judgment motion. A summary judgment motion asserting
lack of enablement or obviousness now has a very real chance of success.
If the patent infringement defendant wishes to pursue a narrow claim construction to
bolster a non-infringement argument, the Phillips case has made the path easier. With the
Phillips case, the Federal Circuit has taught us that the specification is now of primary
importance to the construction of claims. This gives the patent defendant more of an
opportunity to limit a patent’s claims to the specific embodiments disclosed in the
specification.
On the other hand, the patent infringement defendant now has the strategic option of
seeking – or at least not preventing – a broad claim construction. The Liebel-Flarsheim line
of cases teaches us that there is a possibility of invalidating a broad claim for lack of
enablement on summary judgment. In addition, the issue of enablement is one that is
particularly ripe for summary judgment because it is an issue of law.
