Interference No. 103,854
respect to claim 7 pointing out that said claim is not limited to TBP monomers expressed on
the surface of a liposome or bound thereto but, rather, it is directed to a multimer which is
“encapsulated in a liposome.” Paper No. 57, p. 4.
With respect to the term “encapsulated” Wallach contends that the claim must be
interpreted in light of the specification. Brief, p. 39. Wallach points to col. 10, lines 12-24, of
the specification which is said to disclose “that a multimer can be made by indirectly linking
the monomers by being expressed on the surface of liposomes.” Id. Wallach argues that
“[t]his is what was intended by the language of claim 7.” Id.
Given the polemics over the language of claim 7, we must first decide the meaning
and scope of the claim before we can determine whether the subject matter would have been
obvious in view of the teachings of Utsumi.
As a preliminary matter, we point out that litigation-derived testimony of an inventor
and his attorney concerning claim construction is entitled to little or no probative value.
Solomon v. Kimberly-Clark Corp., 2000 U.S. App. LEXIS 15317, 55 USPQ2d 1279, 1283
(Fed. Cir. 2000)(“The testimony of an inventor is often self-serving, after-the-fact attempt to
state what should have been part of his or her patent application... .”) Solomon v. Kimberly-
Clark Corp., 2000 U.S. App. LEXIS 15317, 55 USPQ2d at 1283, quoting Bell & Howell
Document Management Prods. v. Altek Sys., 132 F.3d 701, 706, 45 USPQ2d 1033, 1038
(Fed. Cir. 1997). See also, Roton Barrier Inc, v. The Stanley Works, 79 F.3d 1112, 1126, 37
USPQ2d 1816, 1826 (Fed. Cir. 1996)(“We have previously stated that an inventor’s ‘after-
the-fact testimony is of little weight compared to the clear import of the patent disclosure
itself’.”) The court has stated that the reason the inventor is not competent to construe
claims after a patent has been granted is because
[C]ommonly the claims are drafted by the inventor’s patent solicitor and they
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