The Scope of the Patentee’s
Rights: Direct and Indirect
Infringement
Assignment 21
Introduction
35 U.S.C. 271 § (a) gives the patentee the right
to exclude others from making, selling, offering
for sale in the U.S., or importing the patented
invention into the U.S.
Patent scope


First question: What does a patent claim
mean?
Process called claim construction is used to
assess meaning of claim terms
Claim Construction
Example (U.S. Patent No. 6,035,954):
1. A method of operating a video game including a
game character controlled by a player, the method
comprising:(a) setting a sanity level of the game
character;
(b) modifying the sanity level of the game,
character during game play according to occurrences
in the game, wherein a modifying amount is
determined based on a character reaction and an
amount of character preparation; and
(c) controlling game play according to the
sanity level of the game character, game play being
controlled at least by varying game effects according to
the game character sanity level.
Claim Construction: What is
sanity?
How do you determine what those
phrases mean?
 Claims themselves
 Patent specification
 Patent prosecution (file history)

Extrinsic evidence
Claim construction: first step
The words of a claim are generally
given their ordinary and customary
meaning as one of ordinary skill in the
art would understand them.
 How is the phrase used in the claim
itself?
 How is it used in other claims?
 Differences among claims can also be
a useful guide in understanding the
meaning of particular claim terms.

Claim construction: first step
Here, other claims could say, “where
sanity level is. . .” or “examples of
sanity levels include. . .”
 Here, they are not of any particular
assistance.

Claim construction:
Specification
Claims must be read in the context of
the rest of the patent.
 This is the single best guide to the
meaning of disputed term or phrase.
 Sometimes patents offer definitions
which courts often latch onto.

Claim construction:
Specification
“The instant invention uses the concept
of player ‘sanity’ as a condition which is
monitored and used during gameplay. In
other words, in accordance with the
instant invention, the game is
programmed such that the sanity of the
player or character is effected during
gameplay as a result of occurrences in
the game and/or by the decisions made
by the player during gameplay.”
Claim construction:
Specification
“. . .if the player presses on without
resting or without the proper
preparation, he or she may lose all
sanity. . . The effects could range from
something as simple as being stunned
temporarily all the way to extreme
shell shock.”
 Visual and auditory hallucinations,
heart rate increases may be impacted
by “sanity”

Claim construction:
Prosecution history
The prosecution history is the
complete record of proceedings
before the USPTO.
 It includes arguments offered by the
applicant, as well as cited prior art.
 Applicant may say, “By ‘sanity level’
we mean . . .”

Claim construction: Extrinsic
evidence
All evidence external to the patent and
prosecution history is extrinsic
evidence.
 It includes expert testimony,
dictionaries, treatises, etc.
 Extrinsic evidence is less significant
than the intrinsic record.
 They are particularly useful in
determining what one of skill in the art
would have known

Fromson v.
Advance Offset Plate, Inc.
Two steps to determine literal patent
infringement: (1) the claims are
interpreted; and (2) the claims are
compared to the accused device.
 Invention: a process for making a
lithograph.

Fromson v.
Advance Offset Plate, Inc.

Facts:
 Patentee discovered that anodized aluminum was
a better material for making lithographic plates
than earlier materials. One reason was it gave
lithographers greater choice of chemicals to use.
 The applicant didn’t know what was occurring
when new chemicals were put on the anodized
aluminum plate, he used the word “reaction.” In
reality, no chemical reaction occurred.
 Since the alleged infringer was not using a
chemical reaction in its anodized aluminum
lithography process, it argued that all of the
elements in the claim were not present in its
invention and there could be no infringement.
Fromson v.
Advance Offset Plate, Inc.

The court focused on what the word
“reaction” meant.

If the word “reaction” has a plain meaning,
the courts accept it. If it is ambiguous, will
accept extrinsic evidence and expert
testimony.
Fromson v.
Advance Offset Plate, Inc.
Court held “reaction” does not mean
chemical reaction
 Instead, it held “the treatment of a
metal substrate with an aqueous
solution to yield a layer, regardless of
the chemical structure of the layer or
the proper label for the phenomena
that produced it.”
 remanded to district court apply this
new construction in infringement
analysis.

Infringement
Each and every element must be
present in the accused device or
product for direct infringement to be
found.
 If even one is missing, then the claims
are not infringed.

Infringement

1.
Example:
An apparatus permitting seating of a
person, comprising:
a horizontal surface held at a height
from of three feet from the floor; and
four vertical legs of equal height that
support the horizontal surface at that
height.
Infringement
Infringement
Infringement
Infringement
Infringement
Infringement: DOE

Doctrine of equivalents expands the scope
of the patent from their literal meaning to
capture situations where an accused device
is an equivalent to the claimed element.
Graver Tank v.
Linde Air Products Co.


Doctrine of equivalents expands the scope
of the patent. Test looks to purpose,
quality, and function of the changed
elements and asks “whether persons
reasonably skilled in the art would have
known of the interchangability.”
Patent claimed a flux made of alkaline earth
metal silicate and calcium fluoride
combination.
Graver Tank v.
Linde Air Products Co.

Alkaline earth metal – family of
elements including magnesium.
Patentee used magnesium silicate.
 Alleged infringer used calcium fluoride
and manganese silicates (not an
alkaline earth metal).
Holding: the patent was infringed.

Graver Tank v.
Linde Air Products Co.

Infringed because:
Chemists familiar with elements know
that manganese often reacts similarly
to magnesium and that manganese is
often found in nature with alkaline
earth metals.
 Manganese silicates can be used in
fluxes.
 -> making the substitution is trivial.

Warner-Jenkinson v.
Hilton Davis Chemical Co.

Upholds the doctrine of equivalents and
puts two limits on it:


1. It must be applied to individual elements
of the claim, not to the invention as a whole;
and
2. Its use is limited by prosecution history
estoppel. Unless the patentee can show
otherwise, “the court should presume that
the PTO had a substantial reason related to
patentability for including the limiting element
added by amendment. Prosecution history
estoppel would bar the application of the
doctrine of equivalents to that element.”
Warner-Jenkinson v.
Hilton Davis Chemical Co.
Invention: process for filtering out
impurities in manufactured dyes.
Claimed to work in a slightly acid to
fairly alkaline environment
(pH from 6-9).
 Accused process operates in more
acidic environment (pH below 6).

Warner-Jenkinson v.
Hilton Davis Chemical Co.


No literal infringement because the D’s
filtration system operates in a more acidic
environment than the process claimed in
the patent.
Doctrine of equivalents analysis:


1. Conduct an element by element analysis
– requires that every element or its
equivalent appear in the accused product.
2. Prosecution history estoppel – the
patentee is bound by material surrendered
during prosecution.
Warner-Jenkinson v.
Hilton Davis Chemical Co.

Prosecution history estoppel in this case:



The initial application didn’t include the limit
of pH 6-9.
The examiner found prior art showing a
similar process operating at a pH above 9 ->
applicant made amendment limiting to pH 69.
=> This surrendered filtration at the more
alkaline level: no equivalents argument could
ever capture that because it was not
available initially (pH above 9 was not novel
or nonobvious).
Warner-Jenkinson v.
Hilton Davis Chemical Co.

There was nothing in the patent file
indicating that the examiner required
that change, the patentee made the
change themselves

Unless the patentee could show it was
not made for a reason related to
patentability, the public is entitled to
rely on the free availability of filtration
below pH 6 -> no infringement.
Festo Corp. v. Shoketsu
Kinzoku Kogyo Kabushiki, Co.

Roadmap for using the prosecution history as a
limit on the doctrine of equivalents:

1. Any amendment inserted to satisfy any requirement of
the Patent Act can give rise to an estoppel.

2. The amendment presumably surrenders all the territory
between the amendment and the original claim.

3. Presumption can be rebutted by showing:
• A. That the equivalent was not foreseeable at the time of the
application;
• B. That the rationale underlying the amendment bore no more
than a tangential relation to the equivalent; or
• C. Some other reason suggesting that the patentee could not
reasonably be expected to have described the insubstantial
substitute in question.
Festo Corp. v. Shoketsu
Kinzoku Kogyo Kabushiki, Co.


Invention: rodless cylinder used in
machines.
Facts:



P and D sell rodless cylinders, but D uses 2
one-way sealing rings while the P uses a
single sealing ring with a two-way lip.
Sleeve of D’s cylinder is nonmagnetizable;
P’s is not.
No literal infringement; P claims doctrine of
equivalents infringement –
• That the 2 one-way seals are equivalent to a
single sealing ring with a two-way lip; and
• Using nonmagnetizable material is equivalent to
the materials P uses.
Festo Corp. v. Shoketsu
Kinzoku Kogyo Kabushiki, Co.


Patent was amended to exclude two-way
lips and nonmagnetizable material from the
scope of the claims. Reason for
amendment was not clear but was not done
to avoid prior art.
S. Ct. held –


Any amendment concerning patentability
gives rise to the possibility of an estoppel,
not just amendments that avoided prior art.
There is room for the patentee to argue he
did not surrender all ground – rebut the
presumption of surrender by showing why he
failed to use language that covered the D’s
product or process.
Husky Injection Molding Systems v.
R&D Tool & Engineering
Contributory infringement – there can
be no contributory infringement
without infringement.
 Invention: injection molding machine
that produces “preforms” which are
hollow articles later used to make
containers.

Husky Injection Molding Systems v.
R&D Tool & Engineering

P’s patented machines are set up so that
each allows the customer to make objects
of a particular shape (ex: a hollow preform
that is shaped so that when it is closed, it
will contain a quart of milk.)

If a customer wants to make a new shape,
can still use the old machine but have to buy
a new part (a new mold and carrier plate
combination). P and D sell the parts.
Husky Injection Molding Systems v.
R&D Tool & Engineering
P claims the customer is infringing the
patent when they change the mold
and carrier plate.
 P claims D is secondarily liable by
enabling infringement by either:

Inducing infringement under §271(b);
or
 Contributory infringement under
§271(c). (P only pursued C.I.)

Husky Injection Molding Systems v.
R&D Tool & Engineering

Issue: whether substituting a new
mold and carrier plate assembly is
within the scope of the patent on the
injection molding machine.

Consider whether the customer is
repairing the patented invention
(which is not infringement) or
reconstructing it (which is).
Husky Injection Molding Systems v.
R&D Tool & Engineering

Holding: repair exists if the part being
repaired is a readily replaceable part
-> machines are made in a way that
allows the mold and carrier plates to
be changed => no infringement.
Paper Converting Machine Co.
v. Magna-Graphics Corp.
Patent rights cannot be avoided by
separating the major components of
the invention.
 Invention: machine that winds toilet
paper from an industrial-sized roll on
to the familiar cores.

Paper Converting Machine Co.
v. Magna-Graphics Corp.


Invention has 2 parts: (1) one unwinds toilet
paper from a large roll; and (2) the other
grabs the end and winds the paper onto the
familiar toilet-paper sized roll.
D positioned itself to compete with the
patentee on the day the patent expired: got
orders, assembled the 2 parts of the
product, and tested each. Did not combine
the 2 parts until after patent expired.
Paper Converting Machine Co.
v. Magna-Graphics Corp.



Holding: activity infringed the patent.
“Inventing around” is encouraged but
“building around” is similar to paraphrasing
copyrighted material.
Deepsouth Packing v. Laitram case –
invention for deveining shrimp with 2 major
parts. D solicited order from abroad,
packaged the parts in separate boxes, and
shipped them with instructions on how to
assemble them.
Paper Converting Machine Co.
v. Magna-Graphics Corp.

S. Ct. held that activity was not infringing –
without assembly the infringing result could
not have been achieved. Also, activity
abroad – “if inducing infringement were
predicated on activity abroad, the U.S.
would, in effect, be exporting its patent law.”
(goods manufactured abroad using a
process patented in the U.S. was not
infringing)