Claim Interpretation

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Claim Interpretation

• Intro to IP Prof Merges
• 1.29.09

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Determining Literal Infringement
Material Elements
Rotating handle at end of bar
Cutting element attached to bar
Base, with passageway
U-shaped bar
Claimed Invention
NOT INFRINGING
INFRINGING
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Phillips

• Background Federal Circuit developments
• Repurcussions

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Primary elements

• Outer shell, two steel plate sections
• Sealing means to prevent steel-to-steel contact
• Load-bearing steel baffles extending inwardly
  from steel shell walls

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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.

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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

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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.

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Intrinsic --------- Extrinsic

• Claim language
• Specification
• Prosecution History
• Papers generated during prosecution

• Dictionaries
• Expert witness testimony

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Plain meaning rule

• We have frequently stated that the words of a
  claim are generally given their ordinary and
  customary meaning. Vitronics . . . .

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The Texas Digital approach

• 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

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Texas Digital

• Why?
• To prevent reading in a limitation from the
  specification
• Claim first and foremost

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Dictionary first broad claim scope

• Competing definitions/dictionaries
• Not tied to spec

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Phillips holding

• The 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. -- 795

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Phillips holding (contd)

• There 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 --

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Must analyze entire specification

• Attempting 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.

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relationship
There is sometimes a fine line between reading a
claim in light of the specification, and reading
a limitation into the claim from the
specification.
Much of the time, upon reading the specification
from the perspective of a PHOSITA, it will
become clear whether the patentee is setting out
specific examples of the invention to teach how
to make and use the invention, or whether the
patentee instead intends for the claims and the
embodiments in the specification to be strictly
coextensive. The manner in which the patentee
uses a term within the specification and claims
usually will make the distinction apparent.
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Conclusion
There 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
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Claim Construction Weighing Sources
Prosecution History
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The CLAIM is the thing . . .
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Claim language maps to shelf space
I claim 1. . . . Said body having a tank
therein for storing said water . . .
Patentees Exclusive market space
Laramis competing product external tank
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Equivalents/Literal Claim Scope
Range of Equivalents
Literal Claim Scope
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Hughes Satellite p. 275-78
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• Hughes Aircraft Co. v. United States, 717 F.2d.
  1351, 1362-63 (Fed. Cir. 1983).
• Later developed technology to use onboard
  computers to control satellite orientation is
  equivalent to receive signals form the satellite
  and use the computers on earth to control the
  orientation of the satellite)

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Hughes VIII 1998

• Because Hughes Aircraft Co. v. United States ,
  717 F.2d 1351, 219 USPQ 473 (Fed. Cir. 1983) (
  Hughes VII ) satisfies the legal requirements
  announced in Warner-Jenkinson , we affirm.

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Literal Infringement
Doctrine of Equivalents
?
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Literal Infringement
Doctrine of Equivalents
Modest Inventions
Pioneering Inventions
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Prosecution History Estoppel

• Festo v. SKK Kabushiki, p. 279

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Original Claim Scope
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Original Claim Scope
Narrowed Scope, after amend-ment
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Accused product ultra-purifica-tion at 9.5 pH
X
No Infringement under DOE
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Accused Product pH of 5.0 can Hilton-Davis
assert infringement under DOE?
??
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• United States Patent 4,354,125 Stoll October 12,
  1982 Magnetically coupled arrangement for a
  driving and a driven member
• The invention is concerned with a magnetically
  coupled arrangement for a driving and a driven
  member, which arrangement is operable by a
  pressure medium and is used in a conveying
  system. A slidable piston (16) within a tube (10)
  has an arrangement of annular magnets (20)
  provided at each end with sealing and sliding
  members (24, 26). A driven assembly (18) slidable
  on the outer surface of the tube (10) has an
  arrangement of annular magnets (32) corresponding
  to the magnets (20) and provided at each end with
  a sliding ring (44). The members (24, 26, 44)
  prevent ingress of foreign bodies to the magnet
  locations, and consequently enable the spacing
  between the magnets and the tube (10) to be very
  small. A good magnetic coupling is achieved
  resulting in effective transmission of power.
  Several pistons (16) abutting one another can be
  used for conveying heavy loads.
• Inventors Stoll Kurt (Lenzhalde 72, D-7300
  Esslingen, DE) Appl. No. 153999Filed May 28,
  1980

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Amendments

• Two patents
• Stoll, 4,354,125
• Carroll, 3,779,401

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Prosecution History

• Amendments
• What limitations did patentee add during
  prosecution?
• Why were they made?

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How amended?

• Claims changed to include a new limitation
  piston assembly must now include a pair of
  sealing rings

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Equivalents and Prosecution History

• P. 283
• Insubstantial alterations
• BUT Cannot recapture an insusbtantial
  alteration GIVEN UP during prosecution

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1st point related to patentability

• Claim amendment for any reason can give rise to
  estoppel
• Not just prior art-related reasons

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Presumption arising from claim amendments

• P. 287

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2nd Point The 3-Part Test

• Supreme Court rejects complete bar
• Federal Circuits new rule reversed and thrown out

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Original Claim Scope
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Original Claim Scope
Narrowed Scope, after amend-ment
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2nd Point The 3-Part Test

• P 287
• 1 Unforeseeable equivalents
• 2 Amendment bears tangential relation to
  equivalent
• 3 Some other reason -- ?