Last week I had the opportunity to attend the “Advanced Patent Law Institute” at the USPTO, sponsored by the George Mason University School of Law, the University of Texas School of Law, and Navigant Consulting. One of the more interesting presentations involved a panel of District Court judges from the Eastern District of Texas, Eastern District of Virginia, and the District of Massachusetts.
When asked about common issues that they see in patent claim construction, all of the judges expressed concern about broadly worded claims. In particular, to summarize their collective comments they stated that they find themselves asking how much of the claim is the inventor’s invention, and how much is the patent attorney’s elaboration. The judges’ comments supported the general impression of many patent attorneys that courts are ever more willing to limit the scope of the claims to match the disclosure in the patent’s specification.
The judges also expressed concern about broad claims in software patents, where the detailed description does not discuss any particular structure. In those cases, at least one of the judges suggested that he would closely review the validity of such claims.