Claims III

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Claims III

• Patent Law Prof Merges
• 10.27.08

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On Demand

• Post-Phillips claim construction
• Role of spec
• Disavowal

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• 8. A method of high speed manufacture of a single
  copy of a book comprising the steps of
• 2 storing the text of a plurality of books in a
  computer,
• 3 storing sales information relating to said
  plurality of books in a computer,
• 4 providing means for a customer to visually
  review said sales information,
• 5 commanding a computer to print the text of a
  selected one of said books in response to a
  customer's selection,

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• 6 retrieving the text of said selected one of
  said books from a computer,
• 7 printing the text of said selected one of
  said books on paper pages,
• 8 binding said paper pages together to form
  said selected one of said books,
• 9 storing graphical information corresponding
  to the cover of each of said books,

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• 10 commanding a computer to reproduce said
  graphical information on a book cover, and
• 11 binding said paper pages together with said
  cover therearound.

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442 F.3d 1331, 1338 p. 5

• The district court then defined sales
  information as data stored in a computer which
  is involved in the promoting and selling of a
  book, and that the term is not limited to
  promotional information, but includes descriptive
  information as well, such as price.

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• The defendants argue that the district court
  construed and instructed the jury on sales
  information too broadly. They argue that the
  patent specification and prosecution history
  require that sales information always includes
  information that is promotional in nature, and
  that the term is not met by the provision of only
  price and identifying information such as title
  or ISBN.

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• It is therefore an object of the invention to
  provide a book manufacturing system which is
  capable of storing data corresponding to the text
  and color graphical cover of tens of thousands of
  different books, as well as promotional sales
  text and color graphics for aiding the consumer
  in choosing a book for purchase, and facilitate
  the high speed manufacture of a single copy .
  -- Ross patent spec.

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• We agree with the defendants that the prosecution
  history requires this claim construction, for the
  inclusion of promotional information was a
  material distinction from the prior art. Mr. Ross
  stressed that in his invention a customer can
  browse among books based on information
  concerning the substantive content of the book.

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• The defendants argue that ODMC disavowed this
  interpretation in order to obtain the patent, and
  represented to the patent examiner that the
  inclusion of promotional material is what
  distinguishes this invention from the prior art.

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Disavowal

• Astrazeneca AB v. Mut. Pharm. Co., 384 F.3d 1333,
  1339-40 (Fed. Cir. 2004)
• Where the general summary or description of the
  invention describes a feature of the invention
  (here, micelles formed by the solubilizer) and
  criticizes other products (here, other
  solubilizers, including co-solvents) that lack
  that same feature, this operates as a clear
  disavowal of these other products.

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• The Ross specification repeatedly reinforces its
  usage of the term customer as the retail
  consumer. . . . Although we agree with the
  district court that the Ross invention does not
  concern itself with whether the customer reads
  the book or obtains it for resale, the focus of
  the Ross patent is immediate single-copy printing
  and binding initiated by the customer and
  conducted at the customer's site. -- p. 8

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Customer

• 5 commanding a computer to print the text of a
  selected one of said books in response to a
  customer's selection,

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• The Ross specification repeatedly reinforces its
  usage of the term customer as the retail
  consumer. See col. 7, lines 24-25 (All customer
  actions are conducted within customer console
  103) col. 15, lines 59-60 (the customer seats
  himself or herself in front of computer screen
  157 as depicted in Fig. 2) col. 2, lines 8-12

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• (if the consumer wishes to purchase a book, he
  may either pay for the book through a store clerk
  ... or the consumer may enter his credit card
  into the system). The specification
  distinguishes general purpose machines ... not
  specifically designed to be consumer operated for
  the on demand, automatic manufacturing of a
  single book at the point of sale.

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• The district court's definition of customer
  cannot eliminate these constraints in order to
  embrace the remote large-scale production of
  books for publishers and retailers.

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Providing Means for a Customer to Visually
Review, Clause 4 of Claim 8

• Includes providing a computer or kiosk to the
  customer
• None of the defendants do this
• Again, look to the specification

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442 F.3d 1331, 1340 p. 7

• ODMC argues that the patentee did not disavow the
  standard dictionary meaning of customer, and
  that the Ross invention is not limited to any
  specific kind of customer. However, when the
  scope of the invention is clearly stated in the
  specification, and is described as the advantage
  and distinction of the invention, it is not
  necessary to disavow explicitly a different scope.

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Reading in limitations (bad), vs. interpreting
(good)

• Means for a customer to visually review does
  not include elements in the patent specification,
  which are referred to as being preferable but
  not essential, and thus a customer seat and
  ambient light are not included.

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519 F.3d 1366 (Fed Cir 2008)

• COMPUTER DOCKING STATION CORPORATION,
  Plaintiff-Appellant,
• v.
• DELL, INC

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• The Applicants' system therefore provides an
  extremely powerful utility. A full-sized
  microprocessor with large memory capacity is made
  completely portable. Rather than requiring a
  portable display and keyboard, the present
  invention concentrates on portability of an
  exceptionally large memory capacity in hard disk
  drive....For the same sized unit as a
  conventional lap-top computer, the invention does
  require that peripherals be made available at
  each location

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519 F.3d 1366, 1377

• A careful reading of the prosecution history
  leaves little doubt that the distinctions between
  the invention and Herron are more extensive than
  only the single connector limitation. This court
  observes that the applicants distinguished their
  invention from the prior art in multiple ways.
  Nonetheless a disavowal, if clear and
  unambiguous, can lie in a single distinction
  among many.

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From disavowal to prosecution history estoppel

• Warner-Jenkinson and (most importantly) Festo in
  the Supreme Court

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The Doctrine of Equivalents

• Distinguish from literal infringement
• Distinguish from section 112 par. 6 means plus
  function equivalents common law doctrine

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Warner-Jenkinson arguments in Sup Ct

• What did petitioner W-J argue?

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Warner-Jenkinson arguments in Sup Ct

• What did petitioner W-J argue?
• DOE Dead
• DOE should be narrowed

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1952 Act and the DOE

• Peripheral claiming
• Reissue
• PTO role
• Sec. 112 Par. 6 means plus function claims
• Specific provision implies repeal of general DOE?

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Proper Scope of DOE

• Overall equivalent vs. element-by-element
  analysis
• Judge Nies dissent key

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What does this mean element-by-element?

• What exactly is an element?

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What does this mean element-by-element?

• subjecting an aqueous solution to
  ultrafiltration 1 through a membrane having a
  nominal pore diameter of 5-15 Angstroms 2 under
  a hydrostatic pressure of approx. 200-400
  p.s.i.g. 3 at a pH from approximately 6.0 to
  9.0

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Hypothetical accused product

• Completely new type of aqueous solution that
  promotes separation/purification
• Lower hydrostatic pressure needed
• Broader pH range permissible

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Some cases said . . .

• As a whole standard
• Accused product might infringe
• Other cases/Nies dissent
• No infringement inder DOE here . . .

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Prosecution History Estoppel

• Limit on DOE
• Topic for Festo tomorrow

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• United States Patent 4,189,380 Booth ,   et al.
  February 19, 1980 Salt addition in
  ultrafiltration purification of solutions of
  polymeric colorants
• The ultrafiltration purification of aqueous
  solutions of polymeric colorants, wherein low
  molecular weight impurities are removed in an
  ultrafiltrate leaving a purified polymeric
  colorant-bearing retentate, is carried out with
  improved efficiency when, during at least two
  diavolumes of ultrafiltration, the salt content
  of the retentate is maintained above about 1 by
  weight.
• Inventors Booth Robin G. (Palo Alto, CA)
  Cooper Anthony R. (Los Altos, CA) Assignee
  Dynapol (Palo Alto, CA) Filed November 18, 1976

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Original Claim Rebhahn Application

• In a process for the purification of a dye . . .
  the improvement which comprises subjecting an
  aqueous solution to ultrafiltration through a
  membrane having a nominal pore diameter of 5-15
  Angstroms under a hydrostatic pressure of approx.
  200-400 p.s.i.g. to thereby cause separation of
  said impurities from said dye . . .

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Amendment

• Added this phrase (claim limitation) to the
  claim
• . . . at a pH from approximately 6.0 to 9.0 . .
  .
• Booth reference pH Above 9.0

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• In a process for the purification of a dye . . .
  the improvement which comprises subjecting an
  aqueous solution to ultrafiltration through a
  membrane having 1 a nominal pore diameter of
  5-15 Angstroms 2 under a hydrostatic pressure
  of approx. 200-400 p.s.i.g. 3 at a pH from
  approximately 6.0 to 9.0, to thereby cause
  separation of said impurities from said dye . . .

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Is the DOE dying?

• Allison, John R. and Lemley, Mark A., "The
  (Unnoticed) Demise of the Doctrine of
  Equivalents" . Stanford Law Review, Vol. 59, 2007
  
• The doctrine of equivalents was already near
  death by the late 1990s. That became even more
  true after 2000. Reason Markman

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Signs of Life?

• A Massachusetts federal district court entered
  judgment Dec. 11 on a jury verdict that awarded
  DePuy Spine Inc. over 226 million for
  infringement under the doctrine of equivalents of
  a patent for a device for stabilizing spinal
  column segments (DePuy Spine Inc. v. Medtronic
  Sofamor Danek Inc., D. Mass., No. 01-10165-EFH,
  12/11/07).

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• UC v. DAKOCYTOMATION CALIFORNIA, INC., 517 F.3d
  1364 (FC 2008)
• We thus conclude that appellants have met their
  burden of showing that the amendment did not
  surrender the equivalent in question . . . .
  Accordingly, the court erred in concluding that
  appellants are precluded by estoppel from
  asserting that Dakos products infringe under the
  doctrine of equivalents. Whether they do infringe
  is a question of fact for the trial court to
  consider on remand.