Claim Interpretation Intro to IP Prof Merges 1

Claim Interpretation Intro to IP – Prof Merges 1. 29. 09

Determining Literal Infringement Material Elements Rotating handle Cutting element Base, with U-shaped at end of bar attached to bar passageway bar Claimed Invention G N I R “Accused F N I T Device I” O N G N I R “Accused NF IDevice II”

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. 3 d 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. 3 d 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. -- 795

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 File per Wrap

The CLAIM is the thing. . .

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

Hughes Satellite – p. 275 -78

Hughes Aircraft Co. v. United States, 717 F. 2 d. 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. 2 d 1351, 219 USPQ 473 (Fed. Cir. 1983) ( Hughes VII ) satisfies the legal requirements announced in Warner-Jenkinson , we affirm.

S/E

S/E

Literal Infringement Doctrine of Equivalents Patent Claim Elements • f “means disposed. . . for receiving. . . signals • g “said valve being coupled to said lastnamed means and responsive. . . ? S/E

Literal Infringement Doctrine of Equivalents Patent Claim Elements • f “means disposed. . . for receiving. . . signals • g “said valve being coupled to said lastnamed means and responsive. . . Modest Inventions Pioneering Inventions

Prosecution History Estoppel • Festo v. SKK Kabushiki, p. 279

Original Claim Scope

Original Claim Scope Narrowed Scope, after amendment

X Accused product: ultra-purifica -tion at 9. 5 p. H No Infringement under DOE

? ? Accused Product: p. H 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. : 153999 Filed: 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

1 st 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

nd 2 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 amendment

nd 2 Point: The 3 -Part Test • P 287 • [1] Unforeseeable equivalents • [2] Amendment bears “tangential relation” to equivalent • [3] “Some other reason” -- ?