Book Review: Thesaurus of Claim Construction

Robert C. Kahrl and Stuart B. Soffer, Thesaurus of Claim Construction. OxfordUniversity Press, 2011.  ($295.00, softcover, ISBN 9780199737116, 1050 pages).

As the introduction to Thesaurus of Claim Construction explains, claim construction is a major phase of patent litigation where the meaning and scope of the claims themselves–the parts of a patent where the inventor states what the invention is and what it can do–is determined by the court.  The outcome of this definition phase is crucial to the respective infringement and invalidity positions of the parties.  The scope determines whether the claims are broad enough to cover the accused products or process at issue and determines whether the claims are broad enough to cover products or processes that were part of the prior art.  This reference book contains over 7000 definitions from over 700 claim construction rulings, arranged largely alphabetically, covering over 1100 patents in more than 200 patent classes.  Thesaurus of Claim Construction is designed for patent practitioners, patent litigators, researchers, and parties to litigation and their in-house counsel.  It would also be of benefit to law students pursuing intellectual property practice, as long as price is not an obstacle.  It is recommended for libraries who can afford to pay almost $300 for a single volume print source that will need regular updating to keep it current.

Chapter 1, “How to Use This Book,” details the book’s sources, structure, and context.  Chapter 2 covers the “Outline of the Law of Claim Construction.”  It discusses in depth the changes in the law resulting from the 1995 Markman case.  Chapters 3 and 6 contain over 700 pages of terms.  Each entry contains the definitions, with any references used by the court in its evaluation of the entry.  This is followed by the patent number, class, and subclass, number of claims, and related patent information.  Docket information follows, including the case title, docket number, judicial district, date of the construction order or document, and stage of proceedings.  Chapters 4-5 cover the outline of the law construing “means-plus-function” elements, and “means-plus-function” terms.  Three very helpful appendices provide an index of keywords in context, a table of dictionary references, and a table of cases.

The authors are highly qualified to write this work and spent several years compiling it.  Robert Kahrl practiced law for over thirty years as a patent litigation specialist.  Stuart Soffer is a technical expert on intellectual property issues regarding software, online and digital rights, and related matters.  Thesaurus of Claim Construction is a unique and excellent print reference to provide the patent practitioner with access to previous rulings on the same or similar terms to the ones that the practitioner is researching.

Donna M. Fisher is a law librarian at Senniger Powers LLP in St. Louis MO.