2. Patent Law 10.21.08

3. Patent infringement Lessons from validity –It’s the claim that counts! Comparing claim to [reference] = comparing claim to [accused product]

4. Comparison of: Claimed Invention and Accused Device Literal Non-Literal (Doctrine of Equivalents)

5. Merrill v. Yeomans Evolution of “peripheral claiming” Transition from central claiming

10. Claim I 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.

11. “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”

12. Merrill at p. 783 “[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....”

13. 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. – p. 784

14. 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. – p. 784

15. “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.”

16. 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)

17. 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

18. Phillips Background – Federal Circuit developments Repurcussions

23. 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

24. Section 112 Par 6: p 790 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.

25. 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

26. 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.

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

28. Plain meaning rule: p. 792 We have frequently stated that the words of a claim “are generally given their ordinary and customary meaning.” Vitronics....

29. 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

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

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

32. 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

33. 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 --

34. Casebook pp. 794-95 [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.

35. 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. 798

36. 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.

37. Applying the Phillips approach

38. 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”?

39. 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 interm ediate interlocking, but not solid, internal barrier.”

40. 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. 789

41. Fed Cir Back to district court approach: but different result here Court of Appeals Federal Circuit

42. 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. – 799-800

43. 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 Patent Specification to deflect projectiles all references relate to other than 90°

44. 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.” 2. Modules as defined in claim 1 wherein the steel baffles are oriented with the panel sections disposed at angles for deflecting projectiles such as bullets able to penetrate the steel plates. “An independent claim should be given broader scope than a dependent claim to avoid rendering the dependent claim redundant” Court of Appeals Federal Circuit en banc Reversed Claims not limited to projectile-deflecting function (e.g., structural support)

45. 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

46. 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”

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

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

49. Claim Construction: Starting Point (after claim language) Pendulum Phillips Cybor Specification Prosecution History Intrinsic Evidence Extrinsic Evidence Experts Dictionaries Texas Digital