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 abovementioned 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
Phillips v. AWH Corp.
Patent
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.”
Phillips v. AWH Corp.
Patent
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.