Claim Interpretation

Intro to IP – Prof Merges

2.1.10

Two Main Topics

• Claim interpretation methodology

• What is at stake in claim interpretation issues?

Rotating handle at end of bar

Cutting elementattached to bar

Base, withpassageway

U-shapedbarClaimed

Invention

“AccusedDevice II”

“AccusedDevice I”

NOT INFRIN

GING

INFRIN

GING

Material Elements

Determining Literal Infringement

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

• Specification

• Prosecution History

– Papers generated during prosecution

• Dictionaries

• Expert witness testimony

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/dictionaries

• 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 PatentSpecificationrelationship

“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.”

“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.”

Conclusion

• not about procedure or what evidence may be considered

• highly contextual• subject to de novo review

“[T]here is no magic formula”

Extrinsic sources may not be “used to contradict claim meaning that is unambiguous in light of the intrinsic evidence”

“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”

• Prosecution History

Original Claims

DrawingsPatent

Specification

File

Wrapper

Claim Construction:Weighing Sources

Patent

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.”

Expression unius . . .

• Expression 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

Tank “therein”

TTMP Gun

From Larami Corp. v. Amron; casebook p. 229

BCLT/FJC © 1999 Menell/Merges

Larami Corp. v. AmronThe CLAIM is the thing . . .

Tank “thereon”

BCLT/FJC © 1999 Menell/Merges

Larami “Super Soaker”

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

Literal ClaimScope

Range ofEquivalents

Hughes Satellite – p. 275-78

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)

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.

S/E

S/E

S/E

Literal Infringement

S/E

Doctrine of Equivalents

Patent

•f “means disposed . . . for receiving . . . signals

•g “said valve being coupled to said last-named means and responsive ...

ClaimElements

?

Literal InfringementDoctrine of Equivalents

PioneeringInventions

ModestInventions

Patent

•f “means disposed . . . for receiving . . . signals

•g “said valve being coupled to said last-named means and responsive ...

ClaimElements

Prosecution History Estoppel

• Festo v. SKK Kabushiki, p. 279

Original Claim Scope

Original Claim Scope

Narrowed Scope, after amend-ment

Accused product: ultra-purifica-tion at 9.5 pH

No Infringement under DOE

X

Accused Product: pH of 5.0 – can Hilton-Davis assert infringement under DOE?

??

• 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

Amendments

• Two patents –

–Stoll, 4,354,125

–Carroll, 3,779,401

Prosecution History

• Amendments

• What limitations did patentee add during prosecution?

• Why were they made?

How amended?

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

Equivalents and Prosecution History

• P. 283

• “Insubstantial alterations”

• BUT: Cannot “recapture” an insusbtantial alteration GIVEN UP during prosecution

1st point: “related to patentability”

• Claim amendment for any reason can give rise to estoppel

• Not just prior art-related reasons

Presumption arising from claim amendments

• P. 287

2nd Point: The 3-Part Test

• Supreme Court rejects “complete bar”

• Federal Circuit’s new rule reversed and thrown out

Original Claim Scope

Original Claim Scope

Narrowed Scope, after amend-ment

2nd Point: The 3-Part Test

• P 287

• [1] Unforeseeable equivalents

• [2] Amendment bears “tangential relation” to equivalent

• [3] “Some other reason” -- ?