2. Claim Interpretation Intro to IP – Prof Merges 1.30.12

3. Two Main Topics Claim interpretation methodology What is at stake in claim interpretation issues?

4. Rotating handle at end of bar Cutting element attached to bar Base, with passageway U-shaped bar Claimed Invention “Accused Device II” “Accused Device I” NOT INFRINGING INFRINGING Material Elements Determining Literal Infringement

5. Phillips Background – Federal Circuit developments Repurcussions

10. Primary elements 1.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

11. 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.

12. Intrinsic --------- Extrinsic Claim language Specification Prosecution History –Papers generated during prosecution Dictionaries Expert witness testimony

13. Plain meaning rule We have frequently stated that the words of a claim “are generally given their ordinary and customary meaning.” Vitronics....

14. 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

15. Texas Digital Why? To prevent “reading in a limitation from the specification” Claim first and foremost

16. Dictionary first: broad claim scope Competing definitions/dicti onaries Not tied to spec

17. 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

18. 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 --

19. Must analyze entire specification [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.

20. Claims Patent Specification relationship “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.” “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.”

21. 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”

22. Prosecution History Original Claims Drawings Patent Specification File Wrapper Claim Construction: Weighing Sources Patent

23. 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.”

24. Expressio unius... “Expressio unius est exclusio alterius” To express one is to exclude the other Definition of X implicitly excludes Y

25. Other issues Statement of purpose –Multiple purposes here... Examples in specification –May reveal restrictive meaning; or may not; here – not.

26. [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

27. Phillips and the Canons/Tools Claim differentiation Interpretation in light of purpose Plain meaning vs. contextual meaning “Lexicographer rule” Diclaimer/disavowal of specific meanings

28. Contextual meaning Nystrom v. Trex, 424 F.3d 1136 (Fed. Cir. 2005) Claim covered “board for use in constructing a flooring surface”

31. Nystrom ‘831 patent, claim 1 1. A board for use in constructing a flooring surface for exterior use, said board having a top surface, a bottom surface and opposite side edges, said top surface being manufactured to have a slightly rounded or curved configuration …, thereby defining a convex top surface which sheds water ….

32. Nystrom, ‘831 patent, p. 5, col. 2 A further object of the invention is to provide a decking board which is shaped to shed water from its upper surface, and which also yields a superior product when cut from a log, reducing the amount of scrap in the outermost boards cut from a log.

33. Nystrom v. Trex Spec: equates “decking material” with “lumber cut from … logs” Held: “boards” in claim 1 means are WOOD ONLY Composite boards sold by accused infringer do not infringe

34. What about claim differentiation? 16. A wood decking board for use in constructing a flooring surface for exterior use, said decking board having a convex top surface,....

35. Th[e] principle of claim [differentiation] would suggest that the difference in the use of terms has significance and that “board” should not be limited to wood that is cut from a log. However, simply noting the difference in the use of claim language does not end the matter. Different terms or phrases in separate claims may be construed to cover the same subject matter where the written description and prosecution history indicate that such a reading of the terms or phrases is proper. – 434 F.3d at 1143.

36. Lexicographer rule Patentee may be his (or her) own lexicographer; Kopykake, 302 F.3d 1352 (Fed. Cir. 2002). Definition of “photocopy machine”

39. Patentee’s specification: “Similarly, while the photocopy machine is shown as an integral unit, the scanning and image reproducer aspects need not be in the same housing. As will be appreciated, a characteristic of plain paper photocopy machines is that single button operation results in scanning of an image on the copy glass and reproduction of same on the [edible] web.

40. [Spec, cont’d:] Thus, where the scanning and image reproduction aspects are separate (within or without the same housing), but cooperate to produce the effect of a plain paper photocopy machine with, in essence, one button operation to scan and reproduce the image, the two aspects are deemed to define a photocopy machine as that term is used herein. –302 F.3d 1352, 1359-1360

41. Kopykake Spec: Where scanning and image reproduction are separate, but produce a copy, they “define a photocopy machine as that term is used herein.” Held: INFRINGED

42. The CLAIM is the thing...

44. Nerf division of Hasbro reports SuperSoaker sales of over $200 million per year Roughly 300 million units sold in the past ten years or so Average cost: $25/unit 10% royalty: $20 million/year The $20 million word: thereon

45. 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

46. Equivalents/Literal Claim Scope Literal Claim Scope Range of Equivalents