Summary. Every step of the phase, in the order you do them.

Phase 1 — Assemble the file

  • Obtain the issued patent in a searchable format with column and line numbers.
  • Obtain the complete prosecution history from Patent Center or a commercial provider.
  • Confirm the file includes every office action, response, amendment, interview summary, IDS, and notice of allowance.
  • Retrieve the prosecution history of every parent, continuation, divisional, and CIP in the family.
  • Retrieve any reissue or reexamination history.
  • Retrieve the record of any IPR, PGR, or CBM proceeding, including the patent owner response and all expert declarations.
  • Retrieve foreign counterpart prosecution for inconsistent statements (not intrinsic, but useful).
  • Confirm the priority date for each asserted claim and note whether continuation-in-part matter affects it.
  • Identify every terminal disclaimer and the patents it links.
  • Collect all prior constructions of the same terms from earlier litigation or ITC proceedings.

Failure mode: discovering the dispositive prosecution statement after positions are locked in.

Phase 2 — Build the term index

  • List every term that could plausibly be disputed.
  • For each term, record every appearance in the claims with claim number.
  • For each term, record every appearance in the specification with column and line.
  • For each term, record every appearance in the prosecution history with document and page.
  • Flag any passage containing "the present invention," "the invention requires," "in all embodiments," "unlike the prior art," or similar disavowal language.
  • Flag any passage that reads as an express definition ("as used herein," "means," "is defined as").
  • Flag every claim amendment and the stated reason for it.
  • Note which terms appear in dependent claims in a way that supports claim differentiation.
  • Verify every citation. Assign one person to own citation accuracy.

Failure mode: a miscited column and line in a joint statement, corrected by opposing counsel.

Phase 3 — Define the level of ordinary skill

  • Draft a POSITA definition naming field, education, and years of experience.
  • Confirm the definition is consistent with your obviousness position under 35 U.S.C. § 103.
  • Confirm it is consistent with your enablement and written description positions under 35 U.S.C. § 112.
  • Confirm it is consistent with any indefiniteness position under Nautilus.
  • Have the expert adopt and support the definition in a declaration.
  • Identify how the opposing definition differs and what turns on the difference.

Failure mode: an inflated POSITA for obviousness and a deflated POSITA for indefiniteness, in the same case.

Phase 4 — Triage the terms

For each candidate term, answer in writing:

  • What is our proposed construction?
  • What is their likely proposed construction?
  • If we win, what happens? (Judgment / narrows case / no change)
  • If we lose, what happens?
  • Does our construction read on any prior art reference? Which?
  • Does their construction create an invalidity problem for them?
  • Is this term dispositive, consequential, or housekeeping?

Then:

  • Rank terms and identify which you will trade in the meet and confer.
  • Confirm the court's cap on the number of terms and plan within it.
  • Identify any term where you will argue indefiniteness and confirm the specification supplies no objective baseline.
  • Identify any term that may trigger § 112(f) treatment and confirm whether corresponding structure (or an algorithm) is disclosed.
  • Confirm whether the preamble is limiting for any asserted claim.
  • Decide whether "plain and ordinary meaning" is a real position or an evasion — and if a genuine scope dispute exists, propose a construction.

Failure mode: proposing a construction that wins infringement and hands the other side an anticipation defense.

Phase 5 — Draft the constructions

  • Each construction is substitutable into the claim and reads grammatically.
  • Each construction is supported by intrinsic evidence cited by column and line.
  • No construction references the accused product or a prior art reference.
  • No construction is longer than it needs to be.
  • A fallback construction exists for each disputed term and has been vetted internally.
  • Each construction has been tested against all asserted claims, not just claim 1.
  • Each construction has been tested against the unasserted claims for claim differentiation problems.

Phase 6 — Expert declaration

  • Expert has read the patent, the full prosecution history, and the key prior art.
  • Declaration establishes the POSITA with support.
  • Declaration teaches the technology and the state of the art at the priority date.
  • Declaration identifies genuine factual disputes about term meaning in the field — the findings that receive clear-error deference under Teva.
  • Declaration does not simply assert the desired construction.
  • Declaration would survive scrutiny under Federal Rule of Evidence 702.
  • Expert's prior testimony and publications have been checked for inconsistent statements.
  • Decide whether to depose the opposing expert, and why.

Phase 7 — Joint statement and briefing

  • Agreed constructions are ones you can live with through trial and appeal.
  • Disputed constructions are stated precisely and match your brief exactly.
  • Alternative positions (e.g., indefinite, or in the alternative construed as X) are stated explicitly to avoid waiver.
  • Every evidence citation in the joint statement has been verified.
  • Opening brief includes a neutral technology background with figures.
  • Legal standards section is short.
  • Every disputed term is analyzed in order: claims, specification, prosecution history, extrinsic evidence.
  • Every adverse passage is addressed affirmatively rather than ignored.
  • Quotations are complete and in context.
  • Brief closes with a table of proposed constructions.
  • Page limits, formatting, and appendix rules confirmed against the local rules and the judge's standing order.

Phase 8 — Tutorial and hearing

  • Confirm whether the court holds a tutorial, in what format, and how long.
  • Tutorial teaches the field rather than arguing the case.
  • Physical exhibits or demonstratives prepared and cleared with the court.
  • Bench binder assembled: for each term, the claim, the competing constructions, and the key passages highlighted.
  • A two-minute version of each term's argument prepared and rehearsed.
  • The worst passage for your side identified for each term, with a rehearsed answer.
  • Fallback constructions ready to offer if the court signals dissatisfaction with both proposals.
  • Argument mooted with someone who has not worked on the case.
  • Confirm whether live testimony is permitted and prepare accordingly.

Phase 9 — Coordinate with parallel proceedings

  • Every statement made to the PTAB has been compared against every position taken in district court.
  • Estoppel consequences under 35 U.S.C. § 315 mapped.
  • A single person owns consistency across forums, especially where different firms are involved.
  • Any ITC investigation involving the same patents reviewed for prior constructions.

Phase 10 — After the order

  • Apply each construction to each accused product, in writing, within one week.
  • Apply each construction to each prior art reference, in writing.
  • Determine whether any construction is case-dispositive.
  • If dispositive against you, evaluate a stipulated judgment and draft it to preserve every argument.
  • If a controlling legal question exists, evaluate certification under 28 U.S.C. § 1292(b).
  • Confirm all expert reports will conform to the constructions; schedule revisions.
  • Revise the damages model for any change in the royalty base.
  • Update the settlement analysis and communicate it to the client.
  • Confirm every appellate argument was preserved below.

Preservation quick reference

Risk Preservation step
Unresolved scope dispute left to the jury Object on the record citing O2 Micro
Court adopts neither construction Offer the fallback at the hearing; do not stand mute
Favorable expert testimony gets de novo review Request an express factual finding under Teva
Alternative construction waived State it in the joint statement and the brief
Stipulation waives the appeal Recite that the stipulation is made solely under the court's construction
Sua sponte construction unaddressed Raise it as soon as the risk becomes apparent

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