Need to Construe “Plain and Ordinary Meaning”?

In 2005, the Federal Circuit established the framework for the construction of patent claim terms. In its landmark holding in Philips v. AWH Corp., the Federal Circuit stated that “words of a claim ‘are generally given their ordinary and customary meaning . . . [and] that the ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art . . . .”

Since, practitioners have strategically employed the use of “ordinary and customary meaning” as proposed constructions of disputed claim terms. However, absent agreement between the parties, that may no longer be enough. In Sucampo, AG, et al. v. Dr. Reddy’s Laboratories, Inc., et al., Magistrate Judge Douglas E. Arpert ordered a party asserting “plain meaning” for the disputed claim terms to either confirm that the other party’s proposed construction falls within the “plain meaning” of the claim terms or provide what it contends the “plain meaning” of each term to be. Judge Arpert reasoned that “when a local rule requires a party to provide its contentions relating to claim constructions it is generally improper for a party to state generally that the ordinary meanings of the claim terms should govern and then refuse to set forth what it contends are those ordinary meanings.” Id. at 2 (internal quotations and citation omitted).

New Jersey’s Local Patent Rules require parties to exchange preliminary proposed construction (see L. Pat. R. 4.2) and file a Joint Claim Construction and Prehearing Statement with the court that contains the construction of the terms on which the parties agree and each party’s proposed construction of each disputed term (see L. Pat. R. 4.3). Under these rules and in light of Judge Arpert’s ruling, parties proposing the “plain meaning” for a disputed term should consider providing an alternative proposed construction for that term.

Gibbons will continue to monitor how district courts address issues regarding the use of “plain and ordinary meaning” as a proposed construction for disputed claim terms and how a district’s local patent rules play into the analysis.

Charles H. Chevalier is a Director in the Gibbons Intellectual Property Department.
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