claim interpretation l.
Skip this Video
Loading SlideShow in 5 Seconds..
Claim Interpretation PowerPoint Presentation
Download Presentation
Claim Interpretation

Loading in 2 Seconds...

play fullscreen
1 / 59

Claim Interpretation - PowerPoint PPT Presentation

  • Uploaded on

Claim Interpretation. Intro to IP – Prof Merges 1.29.09. 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.

I am the owner, or an agent authorized to act on behalf of the owner, of the copyrighted work described.
Download Presentation

PowerPoint Slideshow about 'Claim Interpretation' - cosette

An Image/Link below is provided (as is) to download presentation

Download Policy: Content on the Website is provided to you AS IS for your information and personal use and may not be sold / licensed / shared on other websites without getting consent from its author.While downloading, if for some reason you are not able to download a presentation, the publisher may have deleted the file from their server.

- - - - - - - - - - - - - - - - - - - - - - - - - - E N D - - - - - - - - - - - - - - - - - - - - - - - - - -
Presentation Transcript
claim interpretation

Claim Interpretation

Intro to IP – Prof Merges


determining literal infringement
Determining Literal Infringement


Device I”


Device II”

Material Elements

Rotating handle

at end of bar

Cutting element

attached to bar

Base, with








  • Background – Federal Circuit developments
  • Repurcussions
primary elements
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
section 112 par 6
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
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
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
Intrinsic --------- Extrinsic
  • Claim language
  • Specification
  • Prosecution History
    • Papers generated during prosecution
  • Dictionaries
  • Expert witness testimony
plain meaning rule
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
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
Texas Digital
  • Why?
  • To prevent “reading in a limitation from the specification”
  • Claim first and foremost
dictionary first broad claim scope
Dictionary first: broad claim scope
  • Competing definitions/dictionaries
  • Not tied to spec
phillips holding
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
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
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.






“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.”



“[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





File Wrapper

Claim Construction:

Weighing Sources



claim language maps to shelf space
Claim language maps to “shelf space”

I claim –

1. “. . . Said body having a tank therein for storing said water . . .”


Exclusive market space

Larami’s competing product – external tank

equivalents literal claim scope
Equivalents/Literal Claim Scope

Range of





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
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.








  • f “means disposed . . . for receiving . . . signals
  • g “said valve being coupled to said last-named means and responsive ...

Literal Infringement

Doctrine of Equivalents






  • f “means disposed . . . for receiving . . . signals
  • g “said valve being coupled to said last-named means and responsive ...

Literal Infringement

Doctrine of Equivalents





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

Original Claim Scope

Narrowed Scope, after amend-ment

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

  • Two patents –
    • Stoll, 4,354,125
    • Carroll, 3,779,401
prosecution history
Prosecution History
  • Amendments
  • What limitations did patentee add during prosecution?
  • Why were they made?
how amended
How amended?
  • Claims changed to include a new limitation: piston assembly must now include a pair of sealing rings
equivalents and prosecution history
Equivalents and Prosecution History
  • P. 283
  • “Insubstantial alterations”
  • BUT: Cannot “recapture” an insusbtantial alteration GIVEN UP during prosecution
1 st point related to patentability
1st point: “related to patentability”
  • Claim amendment for any reason can give rise to estoppel
  • Not just prior art-related reasons
2 nd point the 3 part test
2nd Point: The 3-Part Test
  • Supreme Court rejects “complete bar”
  • Federal Circuit’s new rule reversed and thrown out

Original Claim Scope

Narrowed Scope, after amend-ment

2 nd point the 3 part test59
2nd Point: The 3-Part Test
  • P 287
  • [1] Unforeseeable equivalents
  • [2] Amendment bears “tangential relation” to equivalent
  • [3] “Some other reason” -- ?