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Claims

VIEWS: 10 PAGES: 52

									Patent Law

 10.25.11
       Patent infringement

• Lessons from validity

  – It’s the claim that counts!


• Comparing claim to [reference] =
  comparing claim to [accused product]
Claim construction important
for validity AND infringement

• See, e.g., Hologic, Inc. v. SenoRx, Inc.,
  639 F.3d 1329 (Fed. Cir. 2011)

• Claim term “asymmetric” interpreted so
  as to distinguish claimed invention
  from the prior art
              Comparison of:
             Claimed Invention
            and Accused Device

• Literal

• Non-Literal (Doctrine of Equivalents)
        Merrill v. Yeomans
• Evolution of “peripheral claiming”

• Transition from central claiming
                  Claim
I claim the above-described new
   manufacture of the deodorized heavy
   hydrocarbon oils, suitable for
   lubricating and other purposes, free
   from the characteristic odors of
   hydrocarbon oils, and having a slight
   smell like fatty oil, from hydrocarbon
   oils, by treating them substantially as is
   hereinbefore described.
• “Plain meaning,” rules of construction

• P. 783: “by treating them substantially
  as hereinbefore described” – what
  significance?

• Transition from old “central claiming”
  to new (and current) “peripheral
  claiming”
             Merrill
“[W]e are compelled to say that
  the language is far from
  possessing that precision and
  clearness of statement with
  which one who proposes to
  secure a monopoly at the
  expense of the public ought to
  describe the thing . . . .”
            Role of the spec.
“[T]he language in the specifications aids us
  in construing the claim….
[M]y invention will be used, if the above-
  mentioned process be worked, to produce
  the deodorized heavy oils above described
  from distilled hydrocarbon oils,” &c. It is
  very clear that what he here calls his
  invention is a thing which produces the
  deodorized oils, and not the oil itself.
   What about the “pro-patentee”
      bias of the Story era?
A strong appeal is made by counsel to give
 the appellant the benefit of a liberal
 construction in support of the patent. . . . If
 the patentee is also entitled to a patent for
 the product … the law affords him a
 remedy, by a surrender and reissue. When
 this is done, the world will have fair notice
 of what he claims, of what his patent
 covers, and must govern themselves
 accordingly.
“The growth of the patent system in the
  last quarter of a century in this country
  has reached a stage in its progress
  where the variety and magnitude of the
  interests involved require accuracy,
  precision, and care in the preparation
  of all the papers on which the patent is
  founded. It is no longer a scarcely
  recognized principle, struggling for a
  foothold, but it is an organized system,
  with well-settled rules, supporting itself
  at once by its utility, and by the wealth
  which it creates and commands.”
       1870 Patent Act


“[A]nd [the inventor] shall
  particularly point out and
  distinctly claim the part,
  improvement, or combination
  which he claims as his
  invention or discovery.” 16
  Stat. 198, 201 (1870)
Markman and aftermath

Markman v. Westview Instruments,
52 F.3d 967 (Fed Cir 1995) (en banc),
      aff’d 517 U.S. 370 (1996)


 Interpreted scope and
meaning of claims as a
question of LAW by the
         court
               Phillips

• Background – Federal Circuit
  developments

• Repurcussions
         Primary elements
1. Outer shell, two steel plate sections

2. Sealing means to prevent steel-to-steel
   contact

3. Load-bearing steel baffles extending
   inwardly from steel shell walls
        Section 112 Par 6
An element in a claim for a combination
 may be expressed as a means or step
 for performing a specified function
 without the recital of structure,
 material, or acts in support thereof, and
 such claim shall be construed to cover
 the corresponding structure, material,
 or acts described in the specification
 and equivalents thereof.
       Old rule/Fed Cir rule
• From “magic words” (“means for . . .”)

• To “does claim recite structure”? Test:
  – if so, even with words “means for,” it
  is NOT a 112 par. 6 “means plus
  function” claim
 Intrinsic vs extrinsic evidence
Although we have emphasized the
 importance of intrinsic evidence in claim
 construction, we have also authorized
 district courts to rely on extrinsic
 evidence, which “consists of all evidence
 external to the patent and prosecution
 history, including expert and inventor
 testimony, dictionaries, and learned
 treatises.” Markman, 52 F.3d at 980.
    Intrinsic --------- Extrinsic
• Claim language         • Dictionaries

• Specification          • Expert witness
                           testimony
• Prosecution History

  – Papers generated
    during prosecution
      Plain meaning rule


We have frequently stated
 that the words of a claim
 “are generally given their
 ordinary and customary
 meaning.” Vitronics . . . .
 The Texas Digital approach:
            794
• Texas Digital Systems, Inc. v.
  Telegenix, Inc., 308 F.3d 1193 (Fed. Cir.
  2002)

• Dictionaries and treatises uber alles!

• Consult BEFORE reading the spec for
  guidance
            Texas Digital
• Why?

• To prevent “reading in a limitation from
  the specification”

• Claim first and foremost
 Dictionary first: broad claim
            scope

• Competing
  definitions/dicti
  onaries

• Not tied to spec
          Phillips holding
[T]he methodology [Texas Digital]
  adopted placed too much reliance on
  extrinsic sources such as dictionaries,
  treatises, and encyclopedias and too
  little on intrinsic sources, in particular
  the specification and prosecution
  history.
          Dist. Ct. opinion
“[F]urther means disposed inside the
  shell for increasing its load bearing
  capacity comprising internal steel
  baffles extending inwardly from the
  steel shell walls.”

 Where does the court look for
 guidance on meaning of “baffles”?
Spec: references to “baffles”
[T]he court noted that “every textual
  reference in the Specification and its
  diagrams show baffle deployment at an
  angle other than 90 [degree] to the wall
  faces” and that “placement of the
  baffles at such angles creates an
  intermediate interlocking, but not solid,
  internal barrier.”
The district court therefore ruled that, for
 purposes of the ’798 patent, a baffle must
 “extend inward from the steel shell walls
 at an oblique or acute angle to the wall
 face” and must form part of an
 interlocking barrier in the interior of the
 wall module. Because Mr. Phillips could
 not prove infringement under that claim
 construction, the district court granted
 summary judgment of noninfringement.

-- p. 806
                 Fed Cir


• Back to district
  court approach: but
  different result here

                           Court of Appeals
                           Federal Circuit
Although deflecting projectiles is one of the
 advantages of the baffles of the ’798
 patent, the patent does not require that the
 inward extending structures always be
 capable of performing that function.
 Accordingly, we conclude that a person of
 skill in the art would not interpret the
 disclosure and claims of the ’798 patent to
 mean that a structure extending inward
 from one of the wall faces is a “baffle” if it
 is at an acute or obtuse angle, but is not a
 “baffle” if it is disposed at a right angle. –
 P. 816
       Spec for ‘798 Patent
The patent states that one advantage of
 the invention over the prior art is that
 “there have not been effective ways of
 dealing with these powerful impact
 weapons with inexpensive housing.”

-- P. 815
        ‘798 Spec (cont’d)

The specification discusses several other
 purposes served by the baffles. For
 example, the baffles are described as
 providing structural support. The
 patent states that one way to increase
 load-bearing capacity is to use “at least
 in part inwardly directed steel baffles
 15, 16.” – p. 815
                                                        Patent
                        Phillips v. AWH Corp.        Specification
                                                   • to deflect projectiles
                                                   • all references relate
                                                     to other than 90°

Baffle "something for
deflecting, checking or
otherwise regulating flow."                                  Drawings


    1. Building modules adapted to fit together for
    construction of fire, sound and impact resistant security
    barriers and rooms for use in securing records and
    persons, comprising in combination, an outer shell . . .,
    sealant means . . . and further means disposed inside
    the shell for increasing its load bearing capacity
    comprising steel baffles extending inwardly from the
    steel shell walls.”
                                                        Patent
                        Phillips v. AWH Corp.        Specification
                                                   • to deflect projectiles,
                                                   Support structure
                                                   all references relate
                                                     to other than 90°
Baffle "something for
deflecting, checking or
otherwise regulating flow."                                  Drawings


    1. Building modules adapted to fit together for
    construction of fire, sound and impact resistant security
    barriers and rooms for use in securing records and
    persons, comprising in combination, an outer shell . . .,
    sealant means . . . and further means disposed inside
    the shell for increasing its load bearing capacity
    comprising steel baffles extending inwardly from the
    steel shell walls.”
    Phillips holding (cont’d)
[T]here will still remain some cases in
  which it will be hard to determine
  whether a person of skill in the art
  would understand the embodiments to
  define the outer limits of the claim term
  or merely to be exemplary in nature.
  While that task may present difficulties
  in some cases, we nonetheless believe
  that --
         Casebook p. 813
[A]ttempting to resolve that problem in
  the context of the particular patent is
  likely to capture the scope of the actual
  invention more accurately than either
  strictly limiting the scope of the claims
  to the embodiments disclosed in the
  specification or divorcing the claim
  language from the specification.
      Claim differentiation

• The “specific limitation on the term
  ‘baffles’ in claim 2 makes it likely
  that the patentee did not
  contemplate that the term “baffles”
  already contained that limitation.”

• -- P. 814
          Phillips holding
• SJ of noninfringement reversed; case
  remanded for inquiry into infringement
  employing proper methodology

• On remand: Jury verdict for plaintiff,
  JMOL for defendant, settled for $2.55
  mil.
Applying the Phillips
     approach
            What About Extrinsic Evidence?
           • can be considered;
             but within context of intrinsic evidence
  • dictionaries collect accepted meanings of terms in an unbiased manner
  • experts can provide background on the technology, explain how an
    invention works, ensure the court’s understanding of the technical
    aspects of the patent is consistent with that of a PHOSITA, or to
    establish that a particular term in the patent or prior art has a
    particular meaning in the pertinent field.
• But generally less reliable because not created in light of or
  at time of the patent, may have been developed as part of the
  patent litigation, can be selected from a “virtually unbounded”
  universe of information
Extrinsic sources may not be “used to contradict claim
meaning that is unambiguous in light of the intrinsic evidence”
                        Conclusion

 “[T]here is no magic formula”

    • not about procedure or what evidence may be considered

     “what matters is for the court to attach the appropriate
     weight to be assigned to those sources in light of the
     statutes and policies that inform patent law”
          • highly contextual
          • subject to de novo review


Extrinsic sources may not be “used to contradict claim
meaning that is unambiguous in light of the intrinsic evidence”
Patent
                       Claim Construction:
                        Weighing Sources




     Original Claims

         Drawings
              Patent
           Specification



• Prosecution
 History
Patent
                       Claim Construction:
                        Weighing Sources




     Original Claims

         Drawings
              Patent
           Specification



• Prosecution
 History
         Spec and Claim
• Retractable Technologies, Inc. v.
  Becton, Dickinson and Co., 653 F.3d
  1296 (Fed. Cir. 2011)
           635 F.3d at 1305
while the claims leave open the possibility
 that the recited “body” may encompass a
 syringe body composed of more than one
 piece, the specifications tell us otherwise.
 They expressly recite that “the invention”
 has a body constructed as a single
 structure, expressly distinguish the
 invention from the prior art based on this
 feature, and only disclose embodiments
 that are expressly limited to having a body
 that is a single piece.

								
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