Patent Claim Drafting and Construction in 2013media.straffordpub.com/.../presentation.pdf ·...
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Patent Claim Drafting and Construction in 2013 Crafting Claims to Withstand Scrutiny and Avoiding Claim Limitation Attack
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WEDNESDAY, MARCH 20, 2013
Presenting a live 90-minute webinar with interactive Q&A
Thomas L. Irving, Partner, Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C.
Lauren L. Stevens, Of Counsel, Foley & Lardner, Palo Alto, Calif.
Colin G. Sandercock, Partner, Perkins Coie, Washington, D.C.
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CLAIM CONSTRUCTION
Presented by:
Lauren L. Stevens, Ph.D.
©2013 Foley & Lardner LLP
Claim Construction
[P]atent claims are so universally
challenging to the non-specialist, that this
court has converted the judicial need to
understand them into an unruly cottage
industry called "claim construction."
Circuit Judge Newman dissenting in Energizer v. U.S. International
Trade Commission, slip op. 2007-1197 (April 21, 2008).
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Why?
• To clarify the meaning of claim terms;
• To more positively recite features that
were disclaimed during prosecution;
• To identify corresponding structure
and function for “means-plus-
function” claims (35 USC § 112(f)).
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Who? In Markman v. Westview Instruments the Supreme Court
decided that judges were to decide the construction of claim terms because “[u]niformity would . . . be ill served by submitting issues of document construction to juries”
According to rule in Cybor, claim construction is reviewed by the Federal Circuit de novo and without deference to the lower court decision – Cybor Corp. v. FAS Technologies Inc., 138 F.3d 1448 (Fed. Cir.
1998)
– Thus the proper question on appeal is not whether the evidence supports the lower court's decision but instead whether the lower court made the correct determination.
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Some Disagree
Deference to trial court’s claim
construction – Trial court hears all testimony
– Current reversal rate on appeal a little over 50%
means prolonged uncertainty about the patent
(why not appeal?)
– See Don Dunner, “Cybor Corp v. FAS
Technologies: The Final Say on Appellate
Review of Claim Construction?” JPTS, July 1998
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Supreme Court Has Not Taken
Up Issue....
So far, – Amgen, Inc. v. Hoechst Marion Roussel, Inc., 457 F.3d 1293
(Fed. Cir. 2006), cert. denied, 127 S.Ct. 2270 (2007)
In the denial of rehearing, Multiple dissents and concurrences over whether should have granted rehearing to debate Cybor rule of de novo review of claim construction.
– Retractable Technologies, Inc. v. Becton, Dickinson and Co., 653 F.3d 1296 (Fed. Cir. 2011), reh’g denied, 100 U.S.P.Q.2d 1714 (Fed. Cir. 2011), cert. denied (U.S. Jan. 7, 2013)
Question briefed: “Whether claim construction, including underlying factual issues that are integral to claim construction, is a purely legal question subject to de novo review on appeal.” (The Cybor Rule).
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Lighting Ballast Control
Lighting Ballast Control L.L.C. v. Philips Electronics North
America Corp., 2013 WL 11874 (Fed. Cir. Jan. 2, 2013)(not
for publication)
– REYNA, Rader, O’Malley
– Means-plus-function claim at issue
– District court: “voltage source means” did not implicate means-
plus-function analysis under 35 U.S.C. §112, para. 6.
– Federal Circuit: Reversed
Means-plus-function claim.
Treating the term as functional, the court concluded that the
specification lacked corresponding structure and thus, the asserted
claims were invalid for indefiniteness
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Maybe The Federal Circuit Will
Change Cybor Rule?
Lighting Ballast Control L.L.C. v. Philips Electronics North America Corp., en banc rehearing granted (March 15, 2013) – Rehearing granted in per curiam order, listing RADER, Newman,
Lourie, Dyk, Prost, Moore, O’Malley, Reyna, and Wallach.
– Order
Court’s opinion of January 2, 2013, vacated
Briefs address the following a.Should this court overrule Cybor Corp. v. FAS
Technologies, Inc., 138 F.3d 1448 (Fed. Cir. 1998)?
b.Should this court afford deference to any aspect of a district court’s claim construction?
c.If so, which aspects should be afforded deference?
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How? Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)
(en banc) “The specification is always highly relevant to claim construction
and is the single best guide to the meaning of a claim term in dispute.” – Cites Vitronics: “The claims, specification, and file history, rather than
extrinsic evidence, constitute the public record of the patentee's claim, a record on which the public is entitled to rely and a guide that entitles competitors to apply the established rules and design around the claimed invention.”
– Extrinsic evidence is less significant than the intrinsic record in determining the meaning of claim language
Intrinsic will usually resolve issue without resort to extrinsic
More from Vitronics: “where the patent documents are unambiguous, expert testimony regarding the meaning of a claim is entitled to no weight.”
Reliance on extrinsic evidence undermines public notice
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First, construe claims
– Intrinsic evidence
Claims
Specification
Prosecution
history, if in
evidence
– Extrinsic evidence, if
necessary
Then, compare claims as
construed to:
accused product
(infringement analysis);
prior art (invalidity analysis);
or
written description (§ 112
support analysis)
Claim Construction
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Start with the Claims
The words of a claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history.
Exceptions – when a patentee sets out a definition and acts as his
own lexicographer;
– when the patentee disavows the full scope of a claim term either in the specification or during prosecution.
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It’s All About The Spec! Chimie v. PPG Industries, 402 F.3d 1371 (Fed. Cir.
2005) – Claim: essentially spheroidal precipitated silica particulates and
their process of manufacture (Micropearl®).
– Limitation at issue: “dust-free and non-dusting.”
– Specification contains ten examples of silica products and the results of several tests making comparisons among those products.
– Tests conducted included tests to measure the level of dust formed by the various silica particulates, including a test using the DIN 53 583 standard.
DIN test = German standard developed to measure certain physical properties of carbon black by determining the fines (dust) and weight loss by abrasion according to a defined procedure.
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Chimie (con’t) DC: Granted SJ of noninfringement.
– “dust-free and non-dusting” ambiguous because it could not be read literally to mean that the invention creates no dust at all.
Test results in written description indicated that the invention itself produced some dust, but less dust than the prior art.
FC: Affirmed – DC properly construed the disputed claim terms.
– Cite Vitronics: a literal construction of “dust-free and non-dusting,” would not read on the preferred embodiment.
– Relative phrase which can only be understood in comparison to the prior art -> written description to determine the scope.
– Only 2 of 10 examples constitute a product of the issued claims.
– DC construction proper because “the only articulation of the dustiness of the claimed invention is made with reference to the DIN 53 583 standard.”
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Relative Terms ArcelorMittal France v. AK Steel Corp., 700 F.3d 1314 (Fed. Cir.
2012)
– “the steel sheet has a very high mechanical resistance after thermal treatment.”
– DC: Construed to mean “an ultimate tensile strength of 1500 MPa or greater.”
no industry definition of “very high” mechanical resistance;
“relied on the statements in the specification that ‘high’ and ‘substantial’ mechanical resistance ‘may exceed 1500 MPa.’”
– FC: Affirmed.
Specification supports district court's construction.
ArcelorMittal argued invention could include a resistance as low as 1000 MPa
– specification language: “makes it possible to obtain a mechanical resistance in excess of 1000 MPa.”
But specification does not refer to 1000 MPa as “high” or “very high.”
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All Parts Of The Specification
Are Fair Game
Abstract – see Howmedica Osteonics Corp. v. Tranquil Prospects, Ltd., 401 F.3d 1367, 74 U.S.P.Q.2d 1680 (Fed. Cir. 2005).
Abstract and Summary of Invention – see C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858 (Fed. Cir. 2004)(“Accordingly, other things being equal, certain sections of the specification are more likely to contain statements that support a limiting definition of a claim term than other sections[.]”).
Object of the Invention – see Stone Strong, LLC v. Del Zotto Products of Florida, Inc. (Fed. Cir. Oct. 17, 2011) (nonprecedential)
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Boilerplate For example: “Although the invention has been
described with reference to a particular embodiment, this description is not meant to be construed in a limiting sense. Various modifications of the disclosed embodiments as well as alternative embodiments of the invention will become apparent to persons skilled in the art . . . . It is therefore contemplated that the appended claims will cover any such modifications or embodiments that fall within the scope of the invention.”
Will not override if specification indicates narrow construction is appropriate – Wireless Agents LLC v. Sony Ericsson Mobile Communications,
No. 06-1054 (Fed. Cir. July 26, 2006) (non-precedential)
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Reliance On Another Claim
Monsanto v. Syngenta Seeds, Inc., 503 F.3d
1352 (Fed. Cir. 2007) – Claim 1 of ‘880 patent: 3-step process for generating an
original RO fertile transgenic plant containing DNA that
provides herbicide resistance.
– Claim 4: A process comprising obtaining progeny from a
fertile transgenic plant obtained by the process of claim 1
which comprise said DNA.
– DC: No infringement.
Claim 4 is a dependent claim.
– Adds fourth step of obtaining progeny.
Monsanto performed all of the steps of claim 1 prior to
issuance of the patents. Performance of last step of claim 4
alone is not infringement.
– -Fed. Cir.: Affirmed
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Monsanto (con’t) Monsanto argued claim 4 was single-step process,
not dependent claim. – Dependent language refers to novel starting material (fertile
transgenic plant previously obtained using claim 1 process) of
the new process in claim 4.
– Determining dependency requires examination of new
claim to see if refers to earlier claim and further limits that
earlier claim.
– “Claim 4 clearly references another claim, not simply a
starting material. The claim might have used express
language to clarify that it only invoked the product of the
process in claim 1 as a starting material, but did not do so.
Instead, the claim language reads claim 1 into claim 4.”
– Claim 4 “only stands if all three steps recited in claim 1
have been performed.”
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Monsanto (con’t) Rejected argument that claim 4 is product-by-process claim.
– Even if claim 4 is a product-by-process claim, Syngenta would still have to
perform the steps of the process of claim 1 to infringe.
– “[c]laim 4 would only have meaning according to the incorporation of the
limitations of claim 1.”
Originally filed claim 30 (corresponds to claim 4) was “incontestably
a dependent claim.”
– 30. The process of claim 23 further comprising (iv) obtaining progeny from
said fertile transgenic plant of step (iii), which comprise said DNA.”
(emphasis added).
– Upon amending that claim after prosecution closed, Monsanto explained
that the claim amendments “[did] not introduce new matter and are
allowable without further search or consideration.”
– Examiner accepted amendment as “directed to matters of form not affecting
the scope of the invention.”
“These two statements underscore that Monsanto did not change a
four-step claim (original claim 30) into a single-step claim (claim 4) with
its amendment.
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Alcon Research, Ltd. v. Apotex
Inc.
Claims:
– 1. A method for treating allergic eye diseases
in humans comprising . . . topically
administering to the eye a composition
comprising a therapeutically effective
amount of [compound X].
– 2. The method of claim 1 wherein the . . .
amount . . . is from about 0.0001 w/v. % to
about 5% (w/v).
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Alcon (cont’d)
Federal Circuit used the dependent claims as “a starting point”
– Court applied principles embodied in 35 USC 112, ¶4 Claim 2 recites concentrations of compound X
“from about 0.0001 w/v. % to about 5% (w/v),” and citing the principles that “a dependent claim cannot be broader than the claim from which it depends,” and “must incorporate . . . all the limitations of the claim to which it refers,” the Federal Circuit reasoned that the “effective amount” of claim 1 must cover at least the range recited in claim 2
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Prosecution History • “The prosecution history limits the interpretation of claim terms so as to
exclude any interpretation that was disclaimed during prosecution.”
Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576, 34
U.S.P.Q.2d 1673, 1676-77 (Fed. Cir. 1995)
• "Explicit statements made by a patent applicant during prosecution to
distinguish a claimed invention over prior art may serve to narrow the
scope of the claim.“Spectrum Int'l, Inc. v. Sterilite Corp., 164 F.3d 1372,
1378, 49 U.S.P.Q.2d 1065, 1068-69 (Fed. Cir. 1998)
• Explicit arguments made during prosecution to overcome prior art can lead
to narrow claim interpretations because "the public has a right to rely on
such definitive statements made during prosecution." Digital Biometrics,
Inc. v. Identix, Inc., 149 F.3d 1335, 1347, 47 U.S.P.Q.2d 1418, 1427 (Fed.
Cir. 1998)
• “Prosecution arguments like this one which draw distinctions between the
patented invention and the prior art are useful for determining whether the
patentee intended to surrender territory, since they indicate in the inventor's
own words what the invention is not.” MBO Laboratories, Inc. v. Becton,
Dickinson & Co., 474 F.3d 1323 (Fed. Cir. 2007).
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Another Example
• Viskase Corp. v. American National Can Co., 261 F.3d
1316, 59 U.S.P.Q.2d 1823 (Fed. Cir. 2001)
• Claim term = “density below about 0.91 g/cm3”
• Accused films either 0.912 g/cm3 or 0.908 g/cm3
• DC: means densities between 0.905 and 0.914, based on the
convention that numbers in this range would be rounded to 0.91.
• FC: means "below about 0.910 g/cm3” because once during
prosecution, Viskase used 0.91 with a zero in the third decimal
place to distinguish a prior art copolymer “having a density range
of "0.910 to 0.940 g/cm3.“
• Interpreted such use as indicating Viskase treated 0.91 as if it were
0.910
• “clear that the prosecution argument to distinguish Shibata was
presented as necessary to draw a line in this crowded field of
technology, and that Viskase drew the line between ‘very low
density’ and other polyethylenes at 0.910 g/cm3”
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• Biotec Biologische Naturverpackungen GmbH & Co. KG
v. Biocorp, Inc., 249 F.3d 1341 (Fed. Cir. 2001)
• Claim term = "substantially water free"
• No definition or numerical range in specification
• FC: meant less than 5% water based on arguments to overcome
a prior art reference which described a water content ranging
from 5% to 30%
Yet Another
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“Clear And Unmistakable”
Disclaimer
“When the patentee makes clear and unmistakable prosecution
arguments limiting the meaning of a claim term in order to overcome
a rejection, the courts limit the relevant claim term to exclude the
disclaimed matter…. An ambiguous disclaimer, however, does not
advance the patent’s notice function or justify public reliance, and
the court will not use it to limit a claim term’s ordinary
meaning. . . .
There is no 'clear and unmistakable' disclaimer if a prosecution
argument is subject to more than one reasonable interpretation, one
of which is consistent with a proffered meaning of the disputed term.
. . .”
– SanDisk Corp. v. Memorex Products, Inc., 415 F.3d 1278 (Fed. Cir.
2005), cert. denied, (U.S. Dec. 2005)
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Construing Silence?
Salazar v. Procter & Gamble Co., 414 F.3d 1342 (Fed.
Cir. 2005)
– Invention: toothbrush
– DC: granted SJ of noninfringement based on construction of
claim term “elastic”
Construed as “any material other than nylon, capable of returning to
an initial state or form after deformation.”
Found that the remarks in the Examiner’s Statement of Reasons for
Allowance “amended the claim specifically to exclude nylon from
the definition of ‘elastic.’”
– FC: Vacate and remand
DC erred in using patent examiner’s Reasons of Allowance to
exclude nylon from the scope of the claim term “elastic”
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Salazar (con’t)
Other than Examiner’s Statement of Reasons for Allowance, prosecution history contains no discussion of the “elastic” limitation by either the examiner or the applicant.
Do unilateral statements of an examiner in stating reasons for allowance create a clear and unambiguous disavowal of claim scope and give rise to prosecution history estoppel? – 37 C.F.R. § 1.109: examiner may set forth reasoning for allowing
claims, and applicant may file comments. “Failure to file such a statement shall not give rise to any implication that the applicant or patent owner agrees with or acquiesces in the reasoning of the examiner.”
– 37 C.F.R. § 1.109 is now 37 C.F.R. § 1.104(e).
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Salazar (con’t)
Applicant’s silence regarding statements made by the examiner
during prosecution, without more, cannot amount to a “clear and
unmistakable disavowal” of claim scope.
District court relied upon same remarks to find PHE, finding that the
examiner’s remarks amended claim term, “elastic”
FC: “This court refuses to create a rule or presumption that the
applicant in this case disavowed claim scope by silence.”
– “An examiner’s statement cannot amend a claim.”
– “Examiner’s unilateral remarks alone do not affect the scope of the claim, let
alone show a surrender of claimed subject matter that cannot be recaptured
under the doctrine of equivalents.”
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Related Applications Prosecution history of related application may be
considered as intrinsic evidence
Inapposite to allow a continuing application the benefit of
the parent’s priority filing date, but then consider the
continuing application’s prosecution history separately
from that of the parent for claim construction purposes – Sextant Avionique S.A. v. Analog Devices, Inc., 172 F.3d 817 (Fed. Cir. 1999): FC used
unrelated but commonly owned application to construe claims
– Abbott Labs. v. Dey, L.P., 287 F.3d 1097 (Fed. Cir. 2002): FC cited Sextant dissent and held
that it is not permissible to use prosecution of unrelated prior art application to construe
claims of subsequent patent
– Microsoft Corp. v. Multi-Tech Systems, Inc., 357 F.3d 1340 (Fed. Cir.), reh’g denied, 2004
U.S. App. LEXIS 8417-18 (2004): FC used a statement in the prosecution of one patent to
construe a claim term in three patents sharing a common specification
– Hakim v. Cannon Avent Gp., PLC., 479 F.3d 1313 (Fed. Cir. 2007): Narrowing arguments
made in a parent case that were not expressly rescinded in prosecution of continuation
application, operated to narrow the claim “Although a disclaimer made during prosecution
can be rescinded, permitting recapture of the disclaimed scope, the prosecution history must
be sufficiently clear to inform the examiner that the previous disclaimer, and the prior art . . .
may need to be re-visited.”
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Extrinsic Evidence
Extrinsic evidence can only assist court in
understanding.
Only turn to extrinsic evidence if intrinsic
evidence is silent or ambiguous.
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But Beware....
MarcTec, LLC v. Johnson & Johnson, 664 F.3d 907 (Fed. Cir. 2012)(O’Malley, J.), prior appeal, 394 Fed. Appx. 685 (Fed. Cir. 2010)
– Fed. Cir. affirmed a nearly $ 4 million award of attorney fees and expenses
accused infringer argued successfully to the trial court that the patentee “engaged in litigation misconduct by, among other things… misrepresenting claim construction law to avoid intrinsic evidence”
case exceptional under 35 USC § 285 based in part on a conclusion that the patentee at the trial court had misrepresented the law of claim construction under Phillips
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MarcTec (cont’d)
“With respect to claim construction, [the patentee] argues that it was
not improper for it to urge the district court to adopt plain meaning
constructions of the disputed claim terms. While we agree that
claim construction necessarily involves consideration of the plain
meaning of disputed terms, here… [the patentee] ignored language
in the specification and statements made during prosecution that
directly contradicted the plain meaning arguments it advanced. In
fact, …counsel for [the patentee] misrepresented the law on claim
construction and encouraged the court to ignore the specification
unless it found an insoluble ‘ambiguity’ in the claim
language.”…While standing alone, such mischaracterizations of
Phillips would not warrant an award of attorney fees, when coupled
with [the patentee]’s decision to advance frivolous and unsupported
allegations of infringement premised on mischaracterizations of the
claim constructions adopted by the trial court, this misdirection lends
support to the district court’s finding of litigation misconduct.”
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AIA and Patent Claim Construction
Suggestions For Avoiding Having Limitations
Read Into Your Claims
Colin G. Sandercock*
* These slides have been prepared solely for the Strafford Claim Construction Webinar and solely reflect the personal views of the author and not the views of Perkins Coie LLP, any other lawyer of the firm, or any of its past, present and future clients.
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Step 1
If the specification is already filed, then assess your risk that the specification provides a reason to narrow or alter the ordinary and customary meaning of your claim terms
The competing rules of claim construction
Rule 1: The specification may not be used to limit the claims
Rule 2: The specification may be used to limit the claims
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“[t]he written description part of the specification itself does not delimit the right to exclude. That is the function and purpose of claims.” Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (en banc)
“[A] court may not import limitations from the written description into the claims.” Laitram Corp. v. NEC Corp., 163 F.3d 1342, 1347 (Fed. Cir. 1998)
"this court has consistently adhered to the proposition that courts cannot alter what the patentee has chosen to claim as his invention, that limitations appearing in the specification will not be read into claims and that interpreting what is meant by a word in a claim ‘is not to be confused with adding an extraneous limitation appearing in the specification, which is improper.’" Intervet America Inc. v. Kee-Vet Laboratories, Inc., 887 F.2d 1050, 1053 (Fed. Cir. 1989) (citation omitted)
The specification may not be used to limit the claims
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“Although the claims of a patent define the invention for which the
patentee is entitled to an exclusionary right, we must read the claims ‘in
view of the specification, of which they are a part.’” Eon-Net LP v. Flagstar
Bancorp, 653 F.3d 1314, 1320 (Fed, Cir. 2011) (limitation from specification
inserted into claims), citing Phillips v. AWH Corp., Inc., 415 F.3d 1303, 1315
(Fed. Cir. 2005) (en banc)
“[T]he basic mandate is for claims to be interpreted in light of the
specification of which they are a part because the specification describes
what the inventors invented. (Citation omitted.) . . . In colloquial terms, ‘you
should get what you disclose.’” Arlington Indus. Inc. v. Bridgeport Fittings
Inc., 632 F.3d 1246, 1257 (J. Lourie, dissenting)
The specification may be used to limit the claims
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Does this help?
“Where a specification does not require a
limitation, that limitation should not be read . . . into the claims.” Specialty Composites v. Cabot Corp., 845 F.2d 981, 987 (Fed. Cir. 1988)
Query: when does the specification require that a limitation be read into the claims?
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Descriptions of “the invention” in the specification
repeatedly have been found to justify (necessitate)
limiting otherwise broad claim language
The Invention, the present invention, an aspect of the
invention
Summary of the invention
Objects of the invention
Does the specification use the term “Invention”?
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We agree with the district court that the claim term “fuel injection
system component” is limited to a fuel filter. . . On at least four
occasions, the written description refers to the fuel filter as “this
invention” or “the present invention”:
This invention relates to a fuel filter for use in the fuel line. . . .
According to the present invention, a fuel filter for a motor
vehicle is made from a moldable material. . . .
The public is entitled to take the patentee at his word and the word
was that the invention is a fuel filter.
Honeywell International, Inc. v. ITT Industries, Inc.,
452 F.3d 1312 (Fed. Cir. 2006)
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* * * we conclude that the district court correctly determined,
as to most, but not all, of the asserted claims … that requiring
automatic determination of finish tooth positions is a proper
construction. . .
The specification then indicates a clear emphasis in the patent
on [automatic determination] rather than human judgment to
determine final tooth positions. “A primary objective of the
present invention is to provide a practical, reliable and efficient
custom appliance automated design and manufacturing
system… .”
Ormco Corp. v. Align Tech., Inc., 498 F.3d 1307, 1313
(Fed. Cir. 2007)
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Eon-Net LP v. Flagstar Bancorp, 653 F.3d 1314
(Fed. Cir. 2011)
Claim 1. A multimode information processing system for
inputting information from a document or file on a
computer into at least one application program. . . .
We agree with Flagstar that the disputed claim terms are
limited to information that originates from a hard copy
document. The written description repeatedly and
consistently defines the invention as a system that
processes information derived from hard copy documents.
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Accentra, Inc. v. Staples, Inc. (Fed. Cir. Jan 4, 2013)
Our cases instruct that when a patent “describes the features of the ‘present invention’ as a whole, this description limits the scope of the invention.” … Applying that principle to claim 20 of the ’768 patent, we conclude that the claim is limited to track pulls that open automatically when the stapler handle and body are rotated away from the stapler base. The ’768 specification makes it clear that the automatic opening feature is central to the invention of that patent.
“present invention provides an automatic track opening function”
“improvement of the present invention is an automatic opening mechanism”
Slip Op. at 9-10
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Does the specification state that the invention includes or excludes a particular feature?
Where the specification makes clear that the invention does not include a particular feature, that feature is deemed to be outside the reach of the claims of the patent, even though the language of the claims, read without reference to the specification, might be considered broad enough to encompass the feature in question.
SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337 (Fed. Cir. 2001) (specification “actually limits the invention to structures that utilize misaligned taper angles”)
Does the specification contain words of
inclusion or exclusion?
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Although sometimes justified and/or unavoidable, language indicating that a feature (or its absence) is important, critical or required may cause a court to narrow otherwise broad claims
Inpro II Licensing S.A.R.L. v. T-Mobile USA, Inc., 450 F.3d 1350 (Fed. Cir. 2006) ("[a] very important feature of the µPDA in an aspect of the present invention is a direct parallel bus interface with a connector. . . .")
Andersen Corp. v. Fiber Composites, LLC, 474 F3d 1361, 1367 (Fed. Cir. 2007) (“[T]he successful manufacture of structural members for windows and doors requires the preliminary manufacture of the polyvinyl chloride wood fiber composite in the form of a pellet. . . .)
Tronzo v. Biomet, Inc., 156 F.3d 1154, 1159 (Fed. Cir. 1998) (“[a]nother extremely important aspect of the present device resides in the configuration of the acetabular cup as …a portion of a truncated cone”).
Does the specification contain words of criticality?
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Does the specification use words such as solely, eliminates,
prevents, removes, always, never, pure, uniform, etc.?
The specification states that “it has now been found that there is a
temperature range in which a catalyst based on pure chromium
(without the addition of another metal oxide) can produce, in the
presence of oxygen,” difluoromethane. . . The specification further
explains that “it is necessary to have a catalyst containing solely
chromium.”
Atofina v. Great Lakes Chemical Corporation, 441 F.3d 991, 997
(Fed Cir 2006) (“chromium catalyst” construed as catalyst where
the only catalytically active material is chromium without the
addition of metal oxides or non-inert additives)
Does the specification describe claim features in
absolute terms?
50
Step 2 (if prosecution has begun)
If there is prosecution history, then assess the risk that it contains
statements that may narrow the meaning of key claim terms or otherwise
constitute a disclaimer of claim scope
Statements made to distinguish prior art or overcome a rejection can
narrow claim scope, even if –
other arguments also were made to overcome the rejection;
the examiner did not agree with the statement; and/or
the examiner did not rely on the statement
See, e.g., American Piledriving Equipt., Inc. v. Geoquip, Inc., 637 F.3d
1324, 1336 (Fed. Cir. 2011) (claim term “integral” narrowed to mean
“formed or cast of one piece” because of prosecution history statement)
51
Step 3 (if the application is not yet filed)
Remove, as appropriate –
references to the invention and objects of the invention, etc.
language of inclusion/exclusion, criticality and absolute terms
Define key terms in the specification
When a patentee explicitly defines a claim term in the patent
specification, the patentee's definition controls. Martek Biosciences
Corp. v. Nutrinova, Inc., 579 F.3d 1363, 1380 (Fed. Cir. 2009) (Court
reversed construction of “animal” that was contrary to definition in spec)
Add examples and/or written description of alternative
embodiments to make clear the breadth of key claim terms
Arlington Indus. Inc., 632 F.3d at 1254 (claims construction not limited
to split-ring embodiment because only one of four embodiments in spec
expressly described split ring)
52
Step 4 (address the claims)
Draft additional claims to invoke claim differentiation
Additional/different language in other claims (including claims in related
patents) presumed not superfluous
See, e.g., Arlington Indus. Inc., 632 F.3d at 1254-5 (construction of
independent claim 8 requiring split-ring reversed because claim 1 contained
split-ring limitation whereas claim 8 did not; “importing a split limitation
improperly discounts substantive differences between the claims. Such
differences can be a ‘useful guide in understanding the meaning of particular
claim terms.’” Citation to Phillips omitted.)
Allergan v. Barr Labs (Fed. Cir. Jan. 28, 2013; Slip Op. at 11) (Claim
limitation N(R4)2 did not require the R4 substituents to be identical; “Asserted
claim 10 ultimately depends from claim 5 and expressly includes three
compounds with nonidentical R4 elements, including bimatoprost.”)
53
Claim Differentiation
A limitation in a dependent claim creates the presumption that the
independent claim is not so limited. See, e.g., Phillips, 415 F.3d at 1312:
Other claims of the patent in question, both asserted and unasserted, can also be valuable sources of enlightenment as to the meaning of a claim term. (Citation omitted.) … For example, the presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim. (Citation omitted.)
But claim differentiation is just a presumption, and sometimes fails
“claim differentiation is a rule of thumb that does not trump the clear
import of the specification,” (citation omitted) and, in this case, the written
description defines the invention as a system for processing information
that originates from a hard copy document.
Eon-Net, 653 F.3d at 1323
54
Delete Unnecessary Claim Limitations
Generally impermissible to read a limitation into a claim when that
limitation previously has been deleted from the claim
Regardless of why LMA amended its claims, we agree with LMA that
it would be improper to read a tube joint limitation back into the
backplate. (Citation omitted.) (“[D]efendant's insist[e]nce upon this
court's reading back into the claims limitations which were originally
there and were removed during prosecution of the application
through the Patent Office cannot be permitted.”).
Laryngeal Mask Co. v. Ambu A/S, 618 F.3d 1367, 1373 (Fed. Cir.
2010)
55
Step 5
Clarify the record – include remarks with your amendment that
correct or clarify prosecution history or spec language that may
work against your desired claim construction
The key is to provide notice – long line of cases support claim
construction in view of prosecution history statements; Phillips v.
AWH Corp., Inc., 415 F.3d 1317
Does your spec say “the present invention”? If so, then make clear if
your claims encompass something broader or different
Is there a statement earlier in the prosecution or in a related
application that might be basis for restricting the claims. If so, then
make clear that the present claims are not so restricted or of a
different scope
Explain key terms and broadening amendments
56
Step 1 – assess your risk that the specification provides a reason to narrow
or alter the ordinary and customary meaning of your claim terms
Step 2 – where prosecution has already begun, assess your risk that it
contains statements that may narrow the meaning of key claim terms or
otherwise constitute a disclaimer of claim scope
Step 3 – if the application is not yet filed, where appropriate amend the
specification to (i) remove language that may provide a basis for narrowing
your claims, and (ii) add embodiments, examples and/or definitions that
support the desired construction of key terms
Step 4 – address the claims by adding independent and/or dependent
claims that clarify the claim scope, and/or by deleting unnecessary
limitations from your claims
Step 5 – clarify the prosecution history to try to neutralize prior statements
that may be potentially problematic
Summary
57
Colin G. Sandercock
Perkins Coie LLP
700 Thirteenth Street N.W.
Washington, D.C. 20005-2003
PHONE: 202.434.1630
FAX: 202.654.9673
E-MAIL: [email protected]
Questions or Comments
Patent Profanity Tom Irving
© Finnegan, 2013
59
DISCLAIMER
These materials are public information and have been prepared solely for
educational and entertainment purposes to contribute to the understanding
of U.S. intellectual property law. These materials reflect only the personal
views of the authors and are not individualized legal advice and do not
reflect the views of FINNEGAN. It is understood that each case is fact-
specific, and that the appropriate solution in any case will vary. Therefore,
these materials may or may not be relevant to any particular situation.
Thus, FINNEGAN and the authors cannot be bound either philosophically or
as representatives of their various present and future clients to the
comments expressed in these materials. The presentation of these
materials does not establish any form of attorney-client relationship with
FINNEGAN or the authors. While every attempt was made to insure that
these materials are accurate, errors or omissions may be contained therein,
for which any liability is disclaimed.
60
Not All Patents Are Created Equal
v.
Clear, unambiguous claims that will
be construed broadly and will be
enforceable; prosecuted in non-
limiting way with a strategically
written specification.
Narrow and/or ambiguous claim
language that will be easily
designed around and will be
worthless. Or poorly drafted
specification; or inartfully
prosecuted patent.
61
“critical”
“essential”
“key”
“peculiar”
“special”
“necessarily”
“important”
OR
ELSE
Be Careful About “Selling” the Invention Too Enthusiastically:
PATENT PROFANITY!!
62
Surprising
Unexpected (?)
All (?)
Only (?)
Each (?)
“The invention is…” or “This
invention…”
WORDS THAT MAKE OTHER
WORDS PROFANITY
63
U.S. specification and prosecution history will be
used to construe U.S. patent claims
De novo appellate review in the U.S. of claim
construction
WHY TO AVOID “PATENT PROFANITY”
64
U.S. Court of Appeals for the Federal Circuit (“FC”) affirmed
holding of noninfringement in Inpro II Licensing, S.A.R.L. v. T-
Mobile USA, Inc., 450 F.3d 1350 (Fed. Cir. 2006) – Invention: a credit-card sized PDA that can be "docked" by plugging
it into a corresponding bay on the host computer.
– U.S. District Court (DC): Construed claim term, “host interface” to
mean “a direct parallel bus interface. No infringement because such a host interface is absent from the accused
devices.
– Inpro: district court erroneously limited term to the embodiment in
the specification; term includes any interface for providing
communication with a host.
“Very Important”
65
Inpro II (con’t)
– FC: Narrow claim scope because patentee used the term
“very important” in the specification.
“A very important feature … in an aspect of the present
invention is a direct parallel bus interface [.]
The only host interface described in the specification is a
direct parallel bus interface.
Specification emphasizes the importance of a parallel
connection in solving the problems of the previously used
serial connection.
“Very Important” and “Only”
66
FC affirmed no infringement in Bayer AG v. Elan Pharmaceuticals
Research Corp., 212 F.3d 1241 (Fed. Cir. 2000), because Bayer
“unmistakably surrendered coverage to SSAs above 4 m2/g” through its
use of the words “special” and “peculiar.
– Claim 1. A solid pharmaceutical composition comprising as the active
ingredient an effective amount of nifedipine crystals with a specific
surface area of 1.0 to 4 m2/g, in admixture with a solid diluent, to result
in a sustained release of nifedipine.
Elan's ANDA covers a once-daily formulation of nifedipine - an extended
release tablet dosage form containing 30 mg of nifedipine.
“Special” “Peculiar”
67
Bayer (con’t)
– DC: Summary judgment of no literal infringement and no infringement
under the doctrine of equivalents.
Elan's proposed product will have an SSA greater than 5 m2/g.
– FC: Affirmed.
“After amending its claims to cover an SSA range of 1.0 to 4 m2/g,
Bayer asserted that it claimed ‘a special form of nifedipine, namely,
having a specific surface area of 1.0 to 4 m2/g,’ …[with] a superior,
inventive range.”
In brief to BPAI, “nifedipine crystals with an SSA range of 1.0 to 4
m2/g provided the ‘peculiar’ effect of maintaining a high blood level
of nifedipine for a long period of time.”
“Special” “Peculiar”
68
FC affirmed no infringement in Atofina v. Great Lakes Chemical Corp.,
441 F.3d 991 (Fed. Cir. 2006), because of statements in the specification
that “it is necessary to have a catalyst containing solely chromium.”
– Great Lakes’ chromium catalyst contained a non-chromium, non-
nickel substance.
Atofina: statements regarding “metal oxides” were intended to distinguish
only nickel-chromium catalysts.
“That the applicants only needed to surrender nickel-chromium catalysts
to avoid a prior art reference does not mean that its disclaimer was
limited to that subject matter.”
“Necessary”
69
“Necessary”
Federal Circuit commented in that patentee may have avoided
anticipation rejection if they DID use patent profanity!
But that leaves a narrow, easily-infringed claim!
ClearValue, Inc. v. Pearl River Polymers, Inc., 668 F.3d 1340
(Fed. Cir. 2012), cert. denied, 133 S.Ct. 615 (2012)
– Claim limitation “raw alkalinity less than or equal to 50 ppm” anticipated by
disclosure of “150 ppm or less”.
– Patentee argued Atofina should apply (claims reciting “between 330–450°C”
not anticipated by disclosure of prior art range of 100–500°C.
70
“Necessary”
ClearValue (con’t)
– FC said reliance on Atofina “misplaced” because Atofina described
narrower range as “critical”, distinguishing the prior art. Patentee in
ClearValue did not explain any critical difference from using less than
50 ppm.
– BUT, that kind of patent profanity may cost you!
–
– And always have to watch out for Rule 56 anytime factual allegations
are made.
71
FC affirmed no infringement in Pharmacia & Upjohn Co. v.
Mylan Pharmaceuticals, Inc., 170 F.3d 1373 (Fed. Cir. 1999),
because during prosecution, Upjohn emphasized the
“criticality” of using spray-dried lactose.
– Claim 1. In an [sic] micronized anti-diabetic pharmaceutical
composition … the improvement which comprises: spray-dried
lactose as the preponderant excipient in said composition, ….
– Mylan’s micronized glyburide compositions used anhydrous
lactose as the principal excipient; they contain no spray-dried
lactose.
“Critical” “Key”
72
Pharmacia (con’t)
– Upjohn’s “profane” arguments in response to rejection:
“As indicated in the specification, the use of spray-dried lactose is a critical feature of the present invention. Using lactose which is not spray-dried does not yield a formulation which is easily and readily manufacturable.”
“The key feature of the present invention is the particular type of lactose employed in the composition.”
“Critical” “Key”
73
“Necessarily”
Although nothing in the claims or specification restricted the
claimed admixture to homogeneous admixtures, the profanity
“necessarily” in the arguments during prosecution resulted in a
narrow claim construction in Biovail Corp. Int’l v. Andrx
Pharmaceuticals, Inc., 239 F.3d 1297 (Fed. Cir. 2001).
DC: Biovail amended its claims during prosecution to “exclude a
sugar core not in admixture with the diltiazem ... in response to a
prior art rejection.” Therefore, “Biovail is estopped from asserting
that the inert sugar core of the Andrx formulation is a ‘wetting
agent’ within the scope of the claims ….”
74
“Necessarily”
Biovail (con’t)
– FC: Affirmed.
Remarks accompanying amendment: a bead
produced by the [claimed] extrusion-spheronization
process “is necessarily a homogeneous bead
composition.”
75
Narrow claim construction in Andersen Corp. v. Fiber
Composites LLC, 474 F.3d 1361 (Fed. Cir. 2007) based on
profanity in the specification and during prosecution.
– For Group II patents, “specification indicates that the
structural members are defined by reference to the process
by which they are made”
– A double profanity:
“procedure requires two important steps. A first blending
step and a second pelletizing step.”
“Requires” “Important”
76
Andersen (con’t)
– Group I claims: During prosecution, applicants repeatedly
distinguished the invention from the prior art by referring to
the pellet form or the pelletization process as an essential
part of the invention.
– “Important” also played a narrowing role.
“The manufacture of the pellet is important in obtaining
the final structural properties of the composite member”
“Essential” “Important”
77
“Invention Is…”
C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858 (Fed. Cir.
2004)
– Claimed plug for hernias, but no claim language as to surface of plug.
– Specification “consistently described as having pleats”
– Summary of Invention, Abstract
– DC: No infringement.
Claim construed to require pleated plug.
78
“Invention Is…”
C.R. Bard (con’t)
– FC: Affirmed -> no infringement by plugs without pleats.
“because the patent globally defined the plug as having a
pleated surface, the term "pleated" need not be repeated
each time a term describing some other aspect of the plug
is used.”
Statements of general applicability clearly define the
claimed plug as "having" or "includ[ing] a pleated surface."
79
“Invention Is…”
C.R. Bard (con’t)
– FC: Explicitly relied on statements in the “Summary of the Invention”
and the Abstract for its claim construction:
“Statements that describe the invention as a whole, rather than
statements that describe only preferred embodiments, are more
likely to support a limiting definition of a claim term. [citation
omitted] …Accordingly, other things being equal, certain sections of
the specification [such as the Summary and Abstract] are more
likely to contain statements that support a limiting definition of a
claim term than other sections…. In this case, the plug claimed by
the '432 patent is defined globally as requiring a pleated surface,
which limits claim 20.”
80
“The present invention”/ “this invention”
Edwards Life Sciences v. Cook, Inc., 582 F.3d
1322 (Fed. Cir. 2009)
– “specification frequently describes an ‘intraluminal graft’ as
‘the present invention’ or ‘this invention,’ indicating an intent
to limit the invention to intraluminal devices.”
81
What About “Preferable”?
Claim includes embodiments beyond “preferable”
– Lampi Corp. v American Power Products, Inc., 228 F.3d
1365, 56 U.S.P.Q. 1444 (Fed. Cir. 2000)
Only “preferred” embodiments within scope of claim.
– Wang Laboratories, Inc. v. American Online, Inc., 197 F.3d 1377
(Fed. Cir. 1999)
– Scimed Life Systems, Inc. v. Advanced Cardiovascular Systems, Inc.,
242 F.3d 1337 (Fed. Cir. 2001)
– Oak Technology, Inc. v. ITC, 248 F.3d 1316 (Fed. Cir. 2001)
82
Minimize the use of words of characterization
– Chief, Majority
– Critical, Essential, Necessary
– Solely, Only, Is
– Main
– Significant
– Principal
– Important
– Fundamental
– Vital
TIPS TO AVOID PATENT PROFANITY
83
TIPS
Obtaining Patents
Be careful of statements that express limitations on scope of
invention.
Define claim terms broadly.
“is” vs. “may be”
The “invention is” vs. “the invention may include”
Attacking Competitors’ Patents
Look very carefully at the precise wording of the patent. Mistakes
will help you narrow their patents.
84
Thank You!
If you have any questions, please contact:
Thomas L. Irving
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Tel: 202.408.4082