Claim Interpretation Intro to IP – Prof Merges 2.1.10
Two Main Topics • Claim interpretation methodology • What is at stake in claim interpretation issues?
Determining Literal Infringement “Accused Device I” “Accused Device II” Material Elements Rotating handle at end of bar Cutting element attached to bar Base, with passageway U-shaped bar Claimed Invention NOT INFRINGING INFRINGING
Phillips • Background – Federal Circuit developments • Repurcussions
Primary elements • Outer shell, two steel plate sections • Sealing means to prevent steel-to-steel contact • 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 entirespecification [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.
Patent Specification Claims relationship “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”
Original Claims Drawings Patent Patent Specification File Wrapper Claim Construction: Weighing Sources •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.”
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
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 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.
Patent Claim Elements S/E • f “means disposed . . . for receiving . . . signals • g “said valve being coupled to said last-named means and responsive ... Literal Infringement Doctrine of Equivalents ?
Patent Claim Elements • f “means disposed . . . for receiving . . . signals • g “said valve being coupled to said last-named means and responsive ... Literal Infringement Doctrine of Equivalents Modest Inventions Pioneering Inventions
Prosecution History Estoppel • Festo v. SKK Kabushiki, p. 279
Original Claim Scope Narrowed Scope, after amend-ment
Accused product: ultra-purifica-tion at 9.5 pH X No Infringement under DOE
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