Literal Patent Claim Scope in the United States · Literal Claim Scope Analysis •claim-focused...

Literal Patent Claim Scope in the United States:

Recent CAFC Trends and Practical Tips for Maximizing Your Own Patent Claim Scope

presented June 2005 byAndrew D. Meikle

Why is understanding literal claim scope important?

•after the Festo decisions, it is now less likely that patent owners can receive the benefit of the Doctrine of Equivalents •literal patent claim scope has become more important•many patent cases in which the patent owner fails to prove literal infringement end in summary judgementfavorably for the accused competitor at the “MarkmanHearing” stage

Literal Claim Scope Analysis

How do you analyze literal claim scope?Court of Appeals for Federal Circuit or the (CAFC) generally stated in past that to best serve the “public notice function”:•first, look at “intrinsic evidence” (i.e. patent record including claims, specification, prosecution history)•second, look at “extrinsic evidence” (dictionaries, industry standards, other sources) only if intrinsic evidence is ambiguous (i.e. not clear)


Which view do you emphasize?•the broader “plain meanings” of the terms in the patent claims?•the narrower, more detailed meanings provided in the specification?

If there is no definition provided for a term in a patent claim, where do you look?•the examples in the specification?•a dictionary?

A review of CAFC decisions from 1982 to present:•many CAFC decisions overturn decisions by lower trial courts regarding literal claim scope•some CAFC decisions favor looking first to claim terms which are assigned “plain and ordinary” meanings (with optional help of a dictionary), then using specification to help “interpret”, but not “limit”, scope (“claim-focused”view)•other CAFC decisions favor looking first to specification and constricting claim scope by reading limitations into the claims or limiting the claims to the disclosed embodiments (“specification-focused” view)


Literal Claim Scope Analysis•claim-focused view

— usually favors patent owners, since claim terms are more likely to be interpreted more broadly

—allows for use of dictionaries (once a form of extrinsic evidence)

•specification-focused view

—usually favors competitors since court tends to interpret claim terms more narrowly based on limitations in specification “read into” claims or presence of only a few disclosed embodiments

Phillips v. AWH Corp. case

71 USPQ2d 1765 (Fed. Cir. 2004)

•CAFC will now attempt to clarify rules in claim-focused vs. specification-focused debate

•en banc panel (all of the judges)

•oral hearing held Feb. 8, 2005


Phillips v. AWH Corp.

Question #1 (of seven questions) asked by the CAFC is:

Is the public notice function of patent claims better served by referencing primarily to technical and general purpose dictionaries…to interpret a claim term or by looking primarily to the …use of the term in the specification? If both sources are to be consulted, in what order?

case history:•was by a typical panel of three judges and has now been “withdrawn”•“specification-focused”•non-infringement

first CAFC decision (at 70 USPQ2d 1417) has already issued,

in favor of the upcoming en banc decisionfirst decision analyzed literal scope of claims based on

viewCAFC narrowly interpreted key patent claim term as basis for

Phillips v. AWH Corp.

Phillips v. AWH Corp.patent claims: vandalism-resistant building modules with modular wall panels•key patent term is “baffle” which court interpreted to be positioned at acute or oblique angles to the wall, but not at 90o (i.e. not perpendicular)•court pointed out that specification emphasized:

—impact resistance properties with regard to projectiles, such as bullets or bombs—baffles at non-90o angles deflect such projectiles

Phillips v. AWH Corp.Fig. 6 of USP 4,677,798

baffle

Phillips v. AWH Corp. Case

•CAFC invited many parties to file briefs addressing the seven questions presented•CAFC intends to issue decision which clarifies the priorities of the sources used to determine literal claim scope•at oral argument, the judges asked questions like:

—If the claims are broader than the specification, doesn’t that create a problem?—If we use [a] dictionary, then which …meaning(s) from that dictionary [do we use]?

Specification-Focused CAFC Decisions

•decisions issued during 1996-2001•O.I. Corp. v. Tekmar Co., 42 USPQ 1777 (Fed. Cir. 1997)•SciMed Life Systems Inc. v. Advanced Cardiovascular Systems Inc., 58 USPQ2d 1059 (Fed. Cir. 2001)•Toro Co. v. White Consolidated Industries Inc., 53 USPQ2d 1065 (Fed. Cir. 1999)

O.I. Corp. v. Tekmar Co.

•narrow claim term scope limited by specification embodiments

•patent claims directed to device/method for removing water vapor from a sample to be analyzed in a gas chromatograph

•key claim term was “passage”

O.I. Corp. v. Tekmar Co.Fig. 3 of USP 5,470,380

passage

•specification disclosed examples of “conical” and “threaded” passages; and distinguished invention from cylindrical, smooth-walled passages (of the prior art)

•lower trial court defined term “passage” to be limited to specification examples, excluding cylindrical, smooth-walled passages


•note: dictionary definition of “passage”clearly includes cylindrical, smooth-walled passages

•CAFC agreed with trial court and upheld narrow definition of “passage”--no literal infringement


•SciMed patent claimed catheter used in angioplasty

•patent claims recited various features relating to different segments along the length of the catheter

SciMed Life Sys.v.

Advanced Cardiovascular Sys.

SciMed Life Sys. v. ACSFig. 1 from USP 5,156,594

SciMed Life Sys. v. ACS•specification repeatedly stated “present invention”directed to “coaxial” structure as distinguished fromdisadvantageous “side-by-side” structure

coaxial

side-by-side

SciMed Life Sys. v. ACS

•competitor ACS device used “side-by-side”structure, but otherwise the same features as recited in the patent claims

•CAFC held that specification made it clear that the “side-by-side” feature was excluded from all the invention embodiments, even though the claims did not exclude this feature—no literal infringement

Toro Co. v. White Consolidated Industries

•patent claims directed to hand-held convertible vacuum-blower

•air inlet cover was fitted with a “restriction ring” that restricted the size of the air inlet when the device was being used in the blower mode


•patent claims recited that air inlet cover “included”the restriction ring

•only embodiment in specification showed ring permanently attached to air inlet cover and specification pointed out advantage of having ring located precisely in correct position


air inlet cover

Toro Co. v. White Consolidated IndustriesFig. 4 of USP 4,694,528

Restriction ring (76)


•CAFC agreed with trial court that air inlet cover “including” restriction ring meant that the ring was permanently attached

•competitor used detachable ring

•CAFC held no literal infringement

Claim-Focused CAFC Decisions•decisions issued 1982-1996 and 2001 to present

•CCS Fitness Inc. v. Brunswick Corp., 62 USPQ2d 1658 (Fed. Cir. 2002)

•Texas Digital Systems Inc. v. Telegenix Inc., 64 USPQ2d 1812 (Fed. Cir. 2002)

•patent claims directed to stationary exercise device (“elliptical trainers”)•key claim term was “reciprocating member”•only example in specification of a reciprocating member was a single-component straight bar (element 432 in Fig. 5)

CCS Fitness v. Brunswick Corp.

Fig. 5 of USP 5,924,962CCS Fitness v. Brunswick Corp.

member (432)

•lower trial court used specification-focused approach and limited “reciprocating member” to single-component, straight bar embodiment

•competitor used a multi-component, curved bar


CAFC reversed trial court

—dictionary definition of “member” was a “structural unit such as a … beam or tie, or a combination of these,”(open to multi-component embodiments)

—nothing in the intrinsic evidence narrows the claim term’s ordinary meaning

—competitor’s multi-component, curved bar was included in the scope of the term “member”


CAFC further stated:

•CAFC will “indulge a ‘heavy presumption’ that a claim term carries its ordinary and customary meaning”

•dictionary definitions may establish a claim term’s ordinary meaning


CAFC stated that accused infringer can overcome “heavy presumption” of “ordinary meaning” of claim term if:

1. patentee acts as his own “lexicographer” and clearly sets forth definition of claim term in specification or prosecution history;


CCS Fitness v. Brunswick Corp.2. intrinsic evidence shows that patentee:

•distinguished claim term from prior art on basis of particular embodiment,•expressly disclaimed subject matter (e.g. SciMed), or•described particular embodiment as important to invention (e.g. Toro); or

3. claim term chosen by patentee so deprives the claim of clarity as to require resort to the other intrinsic evidence (specification and prosecution history) for a definite meaning

•Texas Digital Systems (TDS) was owner of four patents with claims directed to devices/methods for controlling pixel color in light emitting diodes (LEDs)

•CAFC concluded that that lower trial court misconstrued various terms and phrases and reversed a holding of literal infringement

Texas Digital Systems v. Telegenix


CAFC further stated:•When a patent is granted, prosecution is concluded, the intrinsic record is fixed, and the public is placed on notice ofits allowed claims.•Dictionaries, encyclopedias and treatises, publicly available at the time the patent issued, are objective resources that serve as reliable sources of information on the established meanings that would have been attributed to the terms of the claims by those of skill in the art.


•Such references are unbiased reflections of common understanding not influenced by expert testimony or events subsequent to the fixing of the intrinsic record by the grant of the patent, not colored by the motives of the parties, and not inspired by litigation.•Indeed, these materials may be the most meaningful sources of information to aid judges in better understanding both the technology and the terminology used by those skilled in the art to describe the technology.

•…it is entirely proper for …judges to consult these materials at any stage of litigation, regardless of whether they have been offered by a party in evidence or not.•…words often have multiple dictionary meanings…[such that] the intrinsic record must always be consulted to identify which of the different possible dictionary meanings of the claim terms… is most consistent with the use of the words by the inventor.


Predictions for Phillips Decision?

some commentators predict that the en banc decision in Phillips will follow the claim-focused Texas Digitalpath:•First: assign ordinary/customary meanings to claim terms using dictionaries when necessary•Second: review the other intrinsic evidence (specification/prosecution history) for other clues in interpreting the claim terms, while hesitating to limit claim scope to the specific disclosed embodiments of the specification

CAFC has recently clarified how prosecution history affects literal claim scope

•Omega Engineering Inc. v. Raytek Corp., 67 USPQ2d 1321 (Fed. Cir. 2003)

•parameters of “doctrine of prosecution disclaimer” more clearly defined

Effect of Prosecution History on Literal Claim Scope

Doctrine of Prosecution DisclaimerCAFC stated in Omega that:

•the doctrine of prosecution disclaimer (PD) precludes patentees from recapturing through literal claim interpretation specific meanings disclaimed during prosecution

•for PD to attach, disavowing actions or statements made during prosecution must be both clear and unmistakable

•on the other hand, PD does not attach if disavowal is ambiguous (e.g. a sole, unrepeated statement made during prosecution may not invoke PD)

Example of Attachment of Prosecution Disclaimer

•Day International Inc. v. Reeves Brothers Inc., 59 USPQ2d 1790 (Fed. Cir. 2001)•patent claims directed to method of making laminated printing blanket•claims recited that during the method an intermediate layer was maintained at a temperature below the melting point of microcapsules contained therein•claims did not recite any numerical temperature range

Day Int’l v. Reeves Brothers

microcapsules

Day Int’l v. Reeves Brothers•during prosecution applicant emphasized repeatedly in different arguments that claimed method was conducted at “…a lower temperature, namely 110 [oF] to 170 [oF]” than the prior art•competitor used high melting point microcapsules that allowed for method to be conducted at temperature range of about 280-285oF•CAFC held that PD attached such that claims were limited to temperature range of 110-170oF even though range not recited—no literal infringement

Example of Absence of Prosecution Disclaimer

•Liebel-Flarsheim Co. v. Medrad Inc., 69 USPQ2d 1801 (Fed. Cir. 2004)

•patent claims directed to powered fluid injectors used to inject fluids into patients during medical procedures

•all embodiments in specification included “presssure jacket” feature

Liebel-Flarsheim Co. v. Medrad Inc.Fig. 15 of USP 5,658,261

pressure jacket (31)

Liebel-Flarsheim Co. v. Medrad Inc.

•during prosecution applicant replaced the original claims (all reciting “pressure jacket”feature) with new set of claims, some of which did not recite “pressure jacket”feature

•powered fluid injector of competitor did not contain “pressure jacket” feature

Liebel-Flarsheim Co. v. Medrad Inc.

•competitor argued that since all specification embodiments and a number of patent claims included “pressure jacket” feature, this element should be “read into” all claims

•CAFC held that prosecution record failed to provide basis for PD in view of submission of claims not reciting “pressure jacket” feature

Liebel-Flarsheim Co. v. Medrad Inc.•CAFC noted that claims cannot automatically be limited only to specification embodiments unless intrinsic record requires this (no basis here)

•claim scope includes embodiments without “pressure jacket”—incorrect claim construction of lower court overturned and case returned to lower court to determine infringement

•draft specification using broader, inclusive language

—define functions of each element

—include alternatives for each element

—describe many examples (actual and hypothetical)

—use drawings and charts for illustrative examples

Strategies to Obtain Broad Claim Scope

Strategies to Obtain BroadClaim Scope

•draft specification without narrower, exclusive language

—avoid narrowly characterizing invention in specification, e.g. in “summary of invention” section

—avoid overly detailed comparison which excludes prior art (and further defines embodiments outside scope of invention)

—avoid terms like “critical”, “essential”, etc. using instead less restrictive terms like “significant”, “preferred” , etc.


•if possible, use definitions for significant terms in specification

—employ broad definitions rather than narrow ones

—use expansive terms in definitions to enlarge scope of defined terms

—including many examples or illustrations will enlarge literal scope


during prosecution:

•avoid emphasizing distinctions over prior art based on feature not recited in patent claims, since feature may later be “imported” into claims

•if the claims have been amended more narrowly than desired during prosecution, submit claims with broader element(s) in a Divisional Application (which may be handled more favorably in view of the patent grant based on the first application)


during prosecution:

•refer to the advantages of the invention in the “alternative” rather than requiring that all invention advantages be present

•John Josef Molenda, “Understanding the Federal Circuit’s Internal Debate and Its Decision to Rehear Phillips v. AWH Corp. En Banc,” Journal of Patent and Trademark Society (JPTOS), Nov. 2004, pp. 911-929.

•Todd R. Miller, “The ‘Doctrine of Prosecution Disclaimer’ in Construing Patent Claims,” JPTOS, Nov. 2004, pp. 931-954.

References

contact information:

Andrew D. MeikleBirch, Stewart, Kolasch & Birch, LLP

8110 Gatehouse Road, Suite 100 East

P.O. Box 747

Falls Church, Virginia 22040-0747

Telephone: (703) 205-8000

Fax: (703) 205-8050

E-mail: [email protected]

Literal Patent Claim Scope in the United States · Literal Claim Scope Analysis •claim-focused...

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