2. Claim Interpretation Intro to IP – Prof Merges 1.29.09

3. 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

4. Phillips Background – Federal Circuit developments Repurcussions

9. 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

10. 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.

11. 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

12. 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.

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

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

15. 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

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

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

18. 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

19. 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 --

20. 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.

21. 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.”

22. 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”

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

24. The CLAIM is the thing...

26. 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

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

28. Hughes Satellite – p. 275-78

29. 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)

30. 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.

34. S/E

36. Literal Infringement S/E Doctrine of Equivalents Patent f “means disposed... for receiving... signals g “said valve being coupled to said last- named means and responsive... Claim Elements ?

37. Literal Infringement Doctrine of Equivalents Pioneering Inventions Modest Inventions Patent f “means disposed... for receiving... signals g “said valve being coupled to said last- named means and responsive... Claim Elements

38. Prosecution History Estoppel Festo v. SKK Kabushiki, p. 279

43. Original Claim Scope

44. Narrowed Scope, after amend- ment

45. Accused product: ultra- purifica-tion at 9.5 pH No Infringement under DOE X

46. Accused Product: pH of 5.0 – can Hilton-Davis assert infringement under DOE? ??

47. 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

51. Amendments Two patents – –Stoll, 4,354,125 –Carroll, 3,779,401

52. Prosecution History Amendments What limitations did patentee add during prosecution? Why were they made?

53. How amended? Claims changed to include a new limitation: piston assembly must now include a pair of sealing rings

54. Equivalents and Prosecution History P. 283 “Insubstantial alterations” BUT: Cannot “recapture” an insusbtantial alteration GIVEN UP during prosecution

55. 1 st point: “related to patentability” Claim amendment for any reason can give rise to estoppel Not just prior art-related reasons

56. Presumption arising from claim amendments P. 287

57. 2 nd Point: The 3-Part Test Supreme Court rejects “complete bar” Federal Circuit’s new rule reversed and thrown out

58. Original Claim Scope

59. Narrowed Scope, after amend- ment

60. 2 nd Point: The 3-Part Test P 287 [1] Unforeseeable equivalents [2] Amendment bears “tangential relation” to equivalent [3] “Some other reason” -- ?