| name | claim-construction-chart |
| description | Drafts Joint Claim Construction Charts for patent litigation Markman hearings in US federal courts. Organizes disputed claim terms with competing party constructions, intrinsic/extrinsic evidence citations, and agreement status. Use when preparing claim construction charts, Markman hearing exhibits, or joint prehearing statements in IP litigation. |
Joint Claim Construction Chart
Drafts a joint claim construction chart presenting parties' competing interpretations of disputed patent claim terms for Markman proceedings.
Prerequisites
- Asserted patent(s): number, title, issue date, inventors, full claim text
- Case caption: party names, court/division, civil action number
- Identified disputed terms from contentions or meet-and-confer
- Parties' proposed constructions with supporting intrinsic evidence
- Prosecution history: office action responses, amendments, examiner statements
- Applicable local patent rules (e.g., N.D. Cal., E.D. Tex., D. Del.)
Quick Start
- Gather patent documents, disputed terms, and both parties' proposed constructions
- Identify the district's local patent rules for formatting requirements
- Build the disputed terms table with per-term evidence citations
- Classify each term as agreed, partially agreed, or disputed
- Add certifications and signature blocks per local rules
Output Structure
Caption and Cover
Include: court (full designation with division), all parties, civil action number, patent(s) with number/title/issue date/inventors, and document title per local rules ("Joint Claim Construction Chart" or "Joint Claim Construction and Prehearing Statement").
Disputed Terms Table
One row per disputed term with these columns:
| Column | Content |
|---|
| No. | Sequential or claim-order number |
| Claim Term | Exact language from patent |
| Claim No(s). | All claims where term appears |
| Context | Surrounding claim language for court reference |
| Plaintiff's Construction | Plain-language meaning + intrinsic evidence |
| Defendant's Construction | Plain-language meaning + intrinsic evidence |
| Agreement Status | Agreed / Partial / Disputed |
Evidence Citations
For each proposed construction, cite intrinsic evidence:
- Specification — col:line (utility) or paragraph number (applications)
- Claims — related claim language providing definitional context
- Prosecution history — office action responses, amendments, applicant arguments
- Figures/embodiments — specific figures illustrating term meaning
All constructions follow Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc): terms receive ordinary and customary meaning to a POSITA at time of invention, read in light of specification and prosecution history.
If extrinsic evidence is used, it is subordinate to intrinsic evidence per Phillips. Acceptable types: contemporaneous technical dictionaries/treatises, expert declarations (with qualifications and POSITA basis), prior art showing terminology usage, admissible inventor testimony.
Agreement and Disagreement
For each term, classify as:
- Full agreement — present agreed construction; note no judicial construction needed
- Partial agreement — state agreed portions, isolate remaining disputes
- Full disagreement — summarize dispute nature (scope, embodiment limitation, prosecution history impact, indefiniteness)
Indefiniteness Contentions
If a term is challenged under 35 U.S.C. § 112(b):
- State position in defendant's construction column
- Apply Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 901 (2014): whether claim "inform[s] those skilled in the art about the scope of the invention with reasonable certainty"
- Provide factual and legal basis
Certifications and Signatures
- Signature blocks for lead counsel (each party): name, bar number, firm, address, phone, email
- Meet-and-confer certification: dates, participants, good-faith compliance with local patent rules
- Any additional certifications required by local rules
Checks and Pitfalls
- Pin-cite everything — specification col:line, prosecution history date/page, case reporter/page
- Mirror structure — defendant's section must parallel plaintiff's format exactly
- Bluebook citations — proper case names, reporters, pinpoints, parentheticals
- USPTO conventions — patent number, inventor names, issue date, col:line references
- District-specific compliance — check local rules for meet-and-confer requirements, page limits, font/margin rules, joint vs. separate filing
- Jury-suitable constructions — plain-language meanings understandable to a lay jury
- Omit agreed terms unless local rules require listing them
- Flag same-term-different-context — a term in multiple claims may warrant different constructions
- Group related terms by technology concept or claim element when logical
