Patent Law

10.23.12

Patent infringement

• Lessons from validity

– It’s the claim that counts!

• Comparing claim to [reference] = comparing claim to [accused product]

Claim construction important for validity AND infringement

• See, e.g., Hologic, Inc. v. SenoRx, Inc., 639 F.3d 1329 (Fed. Cir. 2011)

• Claim term “asymmetric” interpreted so as to distinguish claimed invention from the prior art

Comparison of: Claimed Invention

and Accused Device

• Literal

• Non-Literal (Doctrine of Equivalents)

Merrill v. Yeomans• Evolution of “peripheral claiming”

• Transition from central claiming

ClaimI claim the above-described new

manufacture of the deodorized heavy hydrocarbon oils, suitable for lubricating and other purposes, free from the characteristic odors of hydrocarbon oils, and having a slight smell like fatty oil, from hydrocarbon oils, by treating them substantially as is hereinbefore described.

• “Plain meaning,” rules of construction

• P. 783: “by treating them substantially as hereinbefore described” – what significance?

• Transition from old “central claiming” to new (and current) “peripheral claiming”

Merrill

“[W]e are compelled to say that the language is far from possessing that precision and clearness of statement with which one who proposes to secure a monopoly at the expense of the public ought to describe the thing . . . .”

Role of the spec.“[T]he language in the specifications aids us

in construing the claim….[M]y invention will be used, if the above-

mentioned process be worked, to produce the deodorized heavy oils above described from distilled hydrocarbon oils,” &c. It is very clear that what he here calls his invention is a thing which produces the deodorized oils, and not the oil itself.

What about the “pro-patentee” bias of the Story era?

A strong appeal is made by counsel to give the appellant the benefit of a liberal construction in support of the patent. . . . If the patentee is also entitled to a patent for the product … the law affords him a remedy, by a surrender and reissue. When this is done, the world will have fair notice of what he claims, of what his patent covers, and must govern themselves accordingly.

“The growth of the patent system in the last quarter of a century in this country has reached a stage in its progress where the variety and magnitude of the interests involved require accuracy, precision, and care in the preparation of all the papers on which the patent is founded. It is no longer a scarcely recognized principle, struggling for a foothold, but it is an organized system, with well-settled rules, supporting itself at once by its utility, and by the wealth which it creates and commands.”

1870 Patent Act

“[A]nd [the inventor] shall particularly point out and distinctly claim the part, improvement, or combination which he claims as his invention or discovery.” 16 Stat. 198, 201 (1870)

Markman and aftermath

Markman v. Westview Instruments, 52 F.3d 967 (Fed Cir 1995) (en banc),

aff’d 517 U.S. 370 (1996)

Interpreted scope and meaning of claims as a

question of LAW by the court

Phillips

• Background – Federal Circuit developments

• Repurcussions

Primary elements1. 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 evidenceAlthough 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: 794

• 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.

Dist. Ct. opinion“[F]urther means disposed inside the

shell for increasing its load bearing capacity comprising internal steel baffles extending inwardly from the steel shell walls.”

Where does the court look for guidance on meaning of “baffles”?

Spec: references to “baffles”[T]he court noted that “every textual

reference in the Specification and its diagrams show baffle deployment at an angle other than 90 [degree] to the wall faces” and that “placement of the baffles at such angles creates an intermediate interlocking, but not solid, internal barrier.”

The district court therefore ruled that, for purposes of the ’798 patent, a baffle must “extend inward from the steel shell walls at an oblique or acute angle to the wall face” and must form part of an interlocking barrier in the interior of the wall module. Because Mr. Phillips could not prove infringement under that claim construction, the district court granted summary judgment of noninfringement.

-- p. 806

Fed Cir

• Back to district court approach: but different result here

Court of AppealsFederal Circuit

Although deflecting projectiles is one of the advantages of the baffles of the ’798 patent, the patent does not require that the inward extending structures always be capable of performing that function. Accordingly, we 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. 816

Spec for ‘798 PatentThe patent states that one advantage of

the invention over the prior art is that “there have not been effective ways of dealing with these powerful impact weapons with inexpensive housing.”

-- P. 815

‘798 Spec (cont’d)

The specification discusses several other purposes served by the baffles. For example, the baffles are described as providing structural support. The patent states that one way to increase load-bearing capacity is to use “at least in part inwardly directed steel baffles 15, 16.” – p. 815

Phillips v. AWH Corp.

1. Building modules adapted to fit together for construction of fire, sound and impact resistant security barriers and rooms for use in securing records and persons, comprising in combination, an outer shell . . ., sealant means . . . and further means disposed inside the shell for increasing its load bearing capacity comprising steel baffles extending inwardly from the steel shell walls.”

Baffle "something for deflecting, checking or otherwise regulating flow." Drawings

PatentSpecification

• to deflect projectiles• all references relate to other than 90°

Phillips v. AWH Corp.

1. Building modules adapted to fit together for construction of fire, sound and impact resistant security barriers and rooms for use in securing records and persons, comprising in combination, an outer shell . . ., sealant means . . . and further means disposed inside the shell for increasing its load bearing capacity comprising steel baffles extending inwardly from the steel shell walls.”

Baffle "something for deflecting, checking or otherwise regulating flow." Drawings

PatentSpecification

• to deflect projectiles,Support structureall references relate to other than 90°

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 --

Casebook p. 813[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.

Claim differentiation

• The “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.”

• -- P. 814

Phillips holding• SJ of noninfringement reversed; case

remanded for inquiry into infringement employing proper methodology

• On remand: Jury verdict for plaintiff, JMOL for defendant, settled for $2.55 mil.

Applying the Phillips approach

What About Extrinsic Evidence?

• But generally less reliable because not created in light of or at time of the patent, may have been developed as part of the patent litigation, can be selected from a “virtually unbounded” universe of information

Extrinsic sources may not be “used to contradict claim meaning that is unambiguous in light of the intrinsic evidence”

• dictionaries collect accepted meanings of terms in an unbiased manner

• experts can provide background on the technology, explain how an invention works, ensure the court’s understanding of the technical aspects of the patent is consistent with that of a PHOSITA, or to establish that a particular term in the patent or prior art has a particular meaning in the pertinent field.

• can be considered; but within context of intrinsic evidence

Conclusion

• not about procedure or what evidence may be considered

• highly contextual• subject to de novo review

“[T]here is no magic formula”

Extrinsic sources may not be “used to contradict claim meaning that is unambiguous in light of the intrinsic evidence”

“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”

• Prosecution History

Original Claims

DrawingsPatent

Specification

File

Wrapper

Claim Construction:Weighing Sources

Patent

• Prosecution History

Claim Construction:Weighing Sources

Original Claims

DrawingsPatent

Specification

File

Wrapper

Patent

Spec and Claim• Retractable Technologies, Inc. v.

Becton, Dickinson and Co., 653 F.3d 1296 (Fed. Cir. 2011)

635 F.3d at 1305while the claims leave open the possibility that

the recited “body” may encompass a syringe body composed of more than one piece, the specifications tell us otherwise. They expressly recite that “the invention” has a body constructed as a single structure, expressly distinguish the invention from the prior art based on this feature, and only disclose embodiments that are expressly limited to having a body that is a single piece.