Claim Interpretation
Intro to IP – Prof Merges
1.30.12
Two Main Topics
• Claim interpretation methodology
• What is at stake in claim interpretation
issues?
Determining Literal Infringement
Material Elements
Claimed
Invention
“Accused
Device I”
“Accused
Device II”
Rotating handle Cutting element Base, with U-shaped
at end of bar
attached to bar passageway
bar
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
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
• 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. – p 275-76
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 --
Must analyze entire
specification
[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.
Claims
relationship
Patent
Specification
“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.”
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
P. 277: claim differentiation
“[D]ependent claim 2 states that the baffles may be
‘oriented with the panel sections disposed at
angles for deflecting projectiles such as bullets
able to penetrate the steel plates.’ The inclusion
of such a 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.”
Expressio unius . . .
• “Expressio unius est exclusio
alterius”
• To express one is to exclude the other
• Definition of X implicitly excludes Y
Other issues
• Statement of purpose
– Multiple purposes here . . .
• Examples in specification
– May reveal restrictive meaning; or may not;
here – not.
[W]e 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. 279
Phillips and the Canons/Tools
•
•
•
•
•
Claim differentiation
Interpretation in light of purpose
Plain meaning vs. contextual meaning
“Lexicographer rule”
Diclaimer/disavowal of specific meanings
Contextual meaning
• Nystrom v. Trex, 424 F.3d
1136 (Fed. Cir. 2005)
• Claim covered “board for use
in constructing a flooring
surface”
Nystrom ‘831 patent, claim 1
1. A board for use in constructing a
flooring surface for exterior use, said
board having a top surface, a bottom
surface and opposite side edges, said top
surface being manufactured to have a
slightly rounded or curved configuration
…, thereby defining a convex top surface
which sheds water ….
Nystrom, ‘831 patent, p. 5, col. 2
A further object of the invention is to
provide a decking board which is shaped
to shed water from its upper surface,
and which also yields a superior product
when cut from a log, reducing the
amount of scrap in the outermost boards
cut from a log.
Nystrom v. Trex
• Spec: equates “decking material” with
“lumber cut from … logs”
• Held: “boards” in claim 1 means are
WOOD ONLY
• Composite boards sold by accused
infringer do not infringe
What about claim differentiation?
16. A wood decking board for
use in constructing a flooring
surface for exterior use, said
decking board having a
convex top surface, . . . .
Th[e] principle of claim [differentiation] would
suggest that the difference in the use of terms
has significance and that “board” should not
be limited to wood that is cut from a log.
However, simply noting the difference in the
use of claim language does not end the matter.
Different terms or phrases in separate claims
may be construed to cover the same subject
matter where the written description and
prosecution history indicate that such a
reading of the terms or phrases is proper. –
434 F.3d at 1143.
Lexicographer rule
• Patentee may be his (or her) own
lexicographer; Kopykake, 302 F.3d 1352 (Fed.
Cir. 2002).
• Definition of “photocopy machine”
Patentee’s specification: “Similarly, while
the photocopy machine is shown as an
integral unit, the scanning and image
reproducer aspects need not be in the
same housing. As will be appreciated, a
characteristic of plain paper photocopy
machines is that single button operation
results in scanning of an image on the
copy glass and reproduction of same on
the [edible] web.
[Spec, cont’d:] Thus, where the scanning
and image reproduction aspects are
separate (within or without the same
housing), but cooperate to produce the
effect of a plain paper photocopy
machine with, in essence, one button
operation to scan and reproduce the
image, the two aspects are deemed to
define a photocopy machine as that
term is used herein. –302 F.3d 1352,
1359-1360
Kopykake
• Spec: Where scanning and
image reproduction are
separate, but produce a copy,
they “define a photocopy
machine as that term is used
herein.” Held: INFRINGED
The CLAIM is the thing . . .
Larami Corp. v. Amron
Tank “therein”
TTMP Gun
From Larami Corp. v. Amron;
casebook p. 229
BCLT/FJC © 1999 Menell/Merges
Larami “Super Soaker”
Tank “thereon”
BCLT/FJC © 1999 Menell/Merges
Nerf division of Hasbro reports
SuperSoaker sales of over $200 million
per year
Roughly 300 million units sold in the
past ten years or so
Average cost: $25/unit
10% royalty: $20 million/year
The $20 million word: thereon
Claim language maps to “shelf space”
I claim –
1. “. . . Said body
having a tank
therein for storing
said water . . .”
Patentee’s
Exclusive
market space
Larami’s
competing
product –
external tank
Equivalents/Literal Claim Scope
Range of
Equivalents
Literal
Claim
Scope