1. 1 Patent Law Update: Phillips En Banc Decision © Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, 2005 By Tom Irving

2. 2 Phillips v. AWH Corp.,--F.3d--, Nos. 03-1269, - 1286 (Fed. Cir. July 12, 2005)(en banc) claim 1: “further means disposed inside the shell for increasing its load bearing capacity comprising internal steel baffles extending inwardly from the steel shell walls.”claim 1: “further means disposed inside the shell for increasing its load bearing capacity comprising internal steel baffles extending inwardly from the steel shell walls.” FC: Reversed portion of judgment addressed to infringementFC: Reversed portion of judgment addressed to infringement –agree with the panel that the term “baffles” is not means-plus-function language that invokes 35 U.S.C. § 112, ¶ 6

3. 3 Phillips v. AWH Corp., cont. “internal steel baffles” identified as structure that performs the recited function of increasing the shell’s load- bearing capacity“internal steel baffles” identified as structure that performs the recited function of increasing the shell’s load- bearing capacity reference to “baffles” does not use the word “means,” and the absence of that term creates a rebuttable presumption that § 112, ¶ 6, does not applyreference to “baffles” does not use the word “means,” and the absence of that term creates a rebuttable presumption that § 112, ¶ 6, does not apply –agree with the panel that the district court erred by limiting the term to corresponding structures disclosed in the specification and their equivalents

4. 4 Phillips v. AWH Corp., cont. FC: Cites Markman, Vitronics, and Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc. (Fed. Cir. 2004), as outline for role of the specification in claim constructionFC: Cites Markman, Vitronics, and Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc. (Fed. Cir. 2004), as outline for role of the specification in claim construction “What we said in those cases bears restating, for the basic principles of claim construction outlined there are still applicable, and we reaffirm them today. We have also previously considered the use of dictionaries in claim construction. What we have said in that regard requires clarification.”“What we said in those cases bears restating, for the basic principles of claim construction outlined there are still applicable, and we reaffirm them today. We have also previously considered the use of dictionaries in claim construction. What we have said in that regard requires clarification.”

5. 5 Phillips v. AWH Corp., cont. The principal question that this case presents is the extent to which we should resort to and rely on a patent’s specification in seeking to ascertain the proper scope of its claims.The principal question that this case presents is the extent to which we should resort to and rely on a patent’s specification in seeking to ascertain the proper scope of its claims.

6. 6 Phillips v. AWH Corp., cont. The ordinary and customary meaning of a claim term is the meaning the term would have to a person of ordinary skill in the art in question at the time of the invention, I.e., as of the effective filing date of the patent application.The ordinary and customary meaning of a claim term is the meaning the term would have to a person of ordinary skill in the art in question at the time of the invention, I.e., as of the effective filing date of the patent application. The inquiry into how a person of ordinary skill in the art understands a claim term provides an objective baseline from which to begin claim interpretation.The inquiry into how a person of ordinary skill in the art understands a claim term provides an objective baseline from which to begin claim interpretation.

7. 7 Phillips v. AWH Corp., cont. Importantly, the person of ordinary skill is deemed to have read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.Importantly, the person of ordinary skill is deemed to have read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification. The ordinary meaning of claim language as understood by POSA (person of ordinary skill in the art) may be readily apparent to lay judges and involves little more than application of widely accepted meaning of commonly understood words.The ordinary meaning of claim language as understood by POSA (person of ordinary skill in the art) may be readily apparent to lay judges and involves little more than application of widely accepted meaning of commonly understood words.

8. 8 Phillips v. AWH Corp., cont. In many cases, determining the ordinary and customary meaning requires examination of terms that have a particular meaning in a field of art.In many cases, determining the ordinary and customary meaning requires examination of terms that have a particular meaning in a field of art. Court then looks to sources available to the public that show what POSA would have understoodCourt then looks to sources available to the public that show what POSA would have understood Those sources include the words of the claims, the specification, the prosecution history, and extrinsic evidence.

9. 9 Phillips v. AWH Corp., cont. The context in which a term is used in the asserted claim can be highly instructive.The context in which a term is used in the asserted claim can be highly instructive. Other claims of the patent, asserted and unasserted can also be a valuable source.Other claims of the patent, asserted and unasserted can also be a valuable source. The usage of a term in one claim can often illuminate the meaning of the same term in other claims.

10. 10 Phillips v. AWH Corp., cont. “[T]he 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.”“[T]he 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.”

11. 11 Phillips v. AWH Corp., cont. The specification is always highly relevant to claim construction and is the single best guide to the meaning of a claim term in dispute.The specification is always highly relevant to claim construction and is the single best guide to the meaning of a claim term in dispute. The specification necessarily informs the correct construction of the claimThe specification necessarily informs the correct construction of the claim –special definition given to a claim term by the patentee –intentional disclaimer, or disavowal, of claim scope by the inventor It is appropriate to rely heavily on the written description for guidance as to the meaning of the claims.It is appropriate to rely heavily on the written description for guidance as to the meaning of the claims.

12. 12 Phillips v. AWH Corp., cont. The prosecution history provides evidence of how the PTO and the inventor understood the patent.The prosecution history provides evidence of how the PTO and the inventor understood the patent. The prosecution history represents an ongoing negotiation and not the final product of the negotiation.The prosecution history represents an ongoing negotiation and not the final product of the negotiation. The prosecution history thus often lacks the clarity of the specification and is less useful for claim construction purposes.The prosecution history thus often lacks the clarity of the specification and is less useful for claim construction purposes.

13. 13 Phillips v. AWH Corp., cont. “Nonetheless, the prosecution history can often inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be“Nonetheless, the prosecution history can often inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be

14. 14 Phillips v. AWH Corp., cont. The courts are authorized to rely on extrinsic evidenceThe courts are authorized to rely on extrinsic evidence But although it might shed useful light, it is less significant than the intrinsic record in determining the meaning of claim language.But although it might shed useful light, it is less significant than the intrinsic record in determining the meaning of claim language. Within the class of extrinsic evidence, dictionaries and treatises can be useful in claim construction.Within the class of extrinsic evidence, dictionaries and treatises can be useful in claim construction. Also, expert testimony can be useful, such as to ensure that the court’s understanding is consistent with that of POSA or to establish a particular meaning of a term.Also, expert testimony can be useful, such as to ensure that the court’s understanding is consistent with that of POSA or to establish a particular meaning of a term.

15. 15 Phillips v. AWH Corp., cont. Extrinsic evidence is less reliable than the specification and prosecution historyExtrinsic evidence is less reliable than the specification and prosecution history Not part of the patent and thus not created at the time of patent prosecutionNot part of the patent and thus not created at the time of patent prosecution May not be written by or for skilled artisansMay not be written by or for skilled artisans Can suffer from bias because created at the time of litigation.Can suffer from bias because created at the time of litigation. There is a virtually unbounded universe of evidence of some marginal relevance.There is a virtually unbounded universe of evidence of some marginal relevance. May be used to change the meaning of claims contrary to the spec and pros historyMay be used to change the meaning of claims contrary to the spec and pros history

16. 16 Phillips v. AWH Corp., cont. “because extrinsic evidence can help educate the court regarding the field of the invention and can help the court determine what a person of ordinary skill in the art would understand claim terms to mean, it is permissible for the district court in its sound discretion to admit and use such evidence. In exercising that discretion, and in weighing all the evidence bearing on claim construction, the court should keep in mind the flaws inherent in each type of evidence and assess that evidence accordingly.”“because extrinsic evidence can help educate the court regarding the field of the invention and can help the court determine what a person of ordinary skill in the art would understand claim terms to mean, it is permissible for the district court in its sound discretion to admit and use such evidence. In exercising that discretion, and in weighing all the evidence bearing on claim construction, the court should keep in mind the flaws inherent in each type of evidence and assess that evidence accordingly.”

17. 17 Phillips v. AWH Corp., cont. Discussion of Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193 (Fed. Cir. 2002)Discussion of Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193 (Fed. Cir. 2002) –Gave greater emphasis to dictionary than to spec –Presumes the dictionary is correct and then consults the spec and pros history to see if: –Patentee has set forth an explicit definition different from ordinary meaning –Has patentee disavowed or disclaimed scope of coverage?

18. 18 Phillips v. AWH Corp., cont. Discussion of Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193 (Fed. Cir. 2002)Discussion of Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193 (Fed. Cir. 2002) –The court was trying to combat an inclination to read spec limitations into the claims. –“Although the concern expressed by the court in Texas Digital (about importing limitations from the specification) was valid, the methodology it 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”

19. 19 Phillips v. AWH Corp., cont. Discussion of Texas Digital (cont’d)Discussion of Texas Digital (cont’d) –“Texas Digital approach limits the role of the specification in claim construction to serving as a check on the dictionary meaning of a claim term if the specification requires the court to conclude that fewer than all the dictionary definitions apply, or if the specification contains a sufficiently specific alternative definition or disavowal.”

20. 20 Phillips v. AWH Corp., cont. Discussion of Texas Digital (cont’d)Discussion of Texas Digital (cont’d) –Such an approach “improperly restricts the role of the specification in claim construction” because the spec is the single best guide and acts as a dictionary when it expressly or implicitly defines terms.

21. 21 Phillips v. AWH Corp., cont. Discussion of Texas Digital (cont’d)Discussion of Texas Digital (cont’d) –Texas Digital approach focuses the inquiry on the abstract meaning of words rather than on the meaning of claim terms within the context of the patent. The ordinary meaning of a claim term is its meaning to the POSA after reading the entire patent. –Too often the Texas Digital line of cases “has been improperly relied upon to condone the adoption of a dictionary definition entirely divorced from the context of the written description.”

22. 22 Phillips v. AWH Corp., cont. Discussion of Texas Digital (cont’d)Discussion of Texas Digital (cont’d) –Even technical dictionaries have problems No guarantee that the term is used in the same way in a treatise as it would be by the patentee –Different dictionaries may contain somewhat different sets of definitions for the same words. A claim should not rise or fall based on the preferences of a particular dictionary editor

23. 23 Phillips v. AWH Corp., cont. Discussion of Texas Digital (cont’d)Discussion of Texas Digital (cont’d) –Or the court’s independent decision, uninformed by the specification to rely on one dictionary rather than another. –Appropriate use of dictionaries is ok. –Recognize that it is difficult to distinguish between using the spec to interpret claim meaning and using that spec to import limitations into the claim.

24. 24 Phillips v. AWH Corp., cont. Discussion of Texas Digital (cont’d)Discussion of Texas Digital (cont’d) –Claims should not be confined to specific embodiments (at least in general!) –But the problem of interpretation/importation should be resolved in the context of the particular patent –“The risk of systematic overbreadth is greatly reduced if the court instead focuses at the outset on how the patentee used the claim term in the claims, specification, and prosecution history, rather than starting with a broad definition and whittling it down.”

25. 25 Phillips v. AWH Corp., cont. Discussion of Texas Digital (cont’d)Discussion of Texas Digital (cont’d) –There is no magic formula or catechism for conducting claim construction. –We explain here why certain types of evidence are more valuable than others.

26. 26 Phillips v. AWH Corp., cont. appropriate use of dictionaries okayappropriate use of dictionaries okay “line between construing terms and importing limitations can be discerned with reasonable certainty and predictability if the court’s focus remains on understanding how a person of ordinary skill in the art would understand the claim terms.”“line between construing terms and importing limitations can be discerned with reasonable certainty and predictability if the court’s focus remains on understanding how a person of ordinary skill in the art would understand the claim terms.” Then the court turns to the facts of the caseThen the court turns to the facts of the case In this case, cannot import the angular limitations from the spec into the claims.In this case, cannot import the angular limitations from the spec into the claims.

27. 27 Phillips v. AWH Corp., cont. FC: disagree with the district court’s claim construction and reversed SJ of noninfringementFC: disagree with the district court’s claim construction and reversed SJ of noninfringement –written description sets forth multiple objectives to be served by the baffles; does not mean “baffles” should be read restrictively to require that the baffles in each case serve all of the recited functions –“Although deflecting projectiles is one of the advantages of the baffles …, the patent does not require that the inward extending structures always be capable of performing that function.

28. 28 Phillips v. AWH Corp., cont. FC: disagree with the district court’s claim construction and reversed SJ of noninfringementFC: disagree with the district court’s claim construction and reversed SJ of noninfringement –“Accordingly, we conclude that a person of skill in the art would not interpret the disclosure and claims … 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.’” –remand infringement claims

29. 29 Phillips v. AWH Corp., cont. Did not answer question regarding deference to trial court’s claim construction:Did not answer question regarding deference to trial court’s claim construction: –“After consideration of the matter, we have decided not to address that issue at this time. We therefore leave undisturbed our prior en banc decision in Cybor.”

30. 30 Phillips v. AWH Corp., cont. Should claim be construed to sustain validity?Should claim be construed to sustain validity? Is it reasonable to infer that the PTO would not have issued an invalid patent and that the ambiguity in the claim language should therefore be resolved in a manner that would preserve the patent’s validity?Is it reasonable to infer that the PTO would not have issued an invalid patent and that the ambiguity in the claim language should therefore be resolved in a manner that would preserve the patent’s validity? Here the claim term “baffles” is not ambiguous. Therefore, don’t consider whether one possible construction would render the claim invalid while the other would not.Here the claim term “baffles” is not ambiguous. Therefore, don’t consider whether one possible construction would render the claim invalid while the other would not.

31. 31 Phillips v. AWH Corp., cont. LOURIE, Circuit Judge, concurring in part and dissenting in part, joined by NEWMANLOURIE, Circuit Judge, concurring in part and dissenting in part, joined by NEWMAN –Agree on specification over dictionaries in interpreting patent claims –Agree that claims need not necessarily be limited to specific or preferred embodiments in the specification

32. 32 Phillips v. AWH Corp., cont. LOURIE, Circuit Judge, concurring in part and dissenting in part, joined by NEWMANLOURIE, Circuit Judge, concurring in part and dissenting in part, joined by NEWMAN –Dissent from decision to reverse and remand the district court's decision original panel interpreted the claims in light of the specification and found that the defendant did not infringe the claimsoriginal panel interpreted the claims in light of the specification and found that the defendant did not infringe the claims –affirmed district court dissent from the panel decision relied on the "dictionaries first" procedure, which the court now has decided not to followdissent from the panel decision relied on the "dictionaries first" procedure, which the court now has decided not to follow no reason, “having reaffirmed the principle on which the district judge and the panel originally decided the case, to send it back for further review”no reason, “having reaffirmed the principle on which the district judge and the panel originally decided the case, to send it back for further review”

33. 33 Phillips v. AWH Corp., cont. MAYER, Circuit Judge, dissenting, joined by NEWMANMAYER, Circuit Judge, dissenting, joined by NEWMAN –“after proposing no fewer than seven questions, receiving more than thirty amici curiae briefs, and whipping the bar into a frenzy of expectation, we say nothing new, but merely restate what has become the practice over the last ten years—that we will decide cases according to whatever mode or method results in the outcome we desire, or at least allows us a seemingly plausible way out of the case. I am not surprised by this. Indeed, there can be no workable standards by which this court will interpret claims so long as we are blind to the factual component of the task.”

34. 34 THE CASES BLESSED BY THE EN BANC PHILLIPS COURT Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 39 U.S.P.Q.2d 1573 (Fed. Cir. 1996) (MICHEL, Lourie, and Friedman) – –Invention: ovens for making printed circuit boards – –Claims limitation at issue: “solder reflow temperature” – –Fed. Cir. Ultimately focused on the specification to come up with a claim construction and remanded – –Remember: specification is single best guide!

35. 35 Vitronics (con’t) – –The specification discloses a method for the reflow soldering of surface mounted devices to a printed circuit board. After various steps, there is a last heating zone, where the solder reaches a temperature high enough to cause the solder to melt and reflow, but the devices themselves are maintained below the solder reflow temperature. – –Claim 1: “heating said board and said solder to a solder reflow temperature …to cause said solder to reflow and solder said devices to said board while maintaining the temperature of said devices below said solder reflow temperature. FRAMEWORK FOR CLAIM CONSTRUCTION

36. 36 Vitronics (con’t) – –Vitronics: “solder reflow temperature” means “peak reflow” temperature, i.e., temperature during the period it is reflowing not the “liquidus” temperature at which the solder begins to melt. That is a temperature approximately 20°C above the liquidus temperature, at which the solder is completely melted and moves freely – –Conceptronic: “solder reflow temperature” means 183°C, i.e., the liquidus temperature of a particular type of solder known as 63/37 (Sn/Pb) solder FRAMEWORK FOR CLAIM CONSTRUCTION

37. 37 Vitronics (con’t) – –The district court, without saying why, went with Conceptronic and found that Vitronics: “solder reflow temperature” means 183°C, i.e., the liquidus temperature of a particular type of solder known as 63/37 (Sn/Pb) solder The specification showed three types of solder and the claims were not limited to any particular solder and thus not to any particular solder with any particular liquidus temperature The materials before the district court: spec, expert testimony, prior testimony and writings of Vitronics, and technical references FRAMEWORK FOR CLAIM CONSTRUCTION

38. 38 Vitronics (con’t) – –Vitronics urged that although in isolation the term “solder reflow temperature” might be ambiguous, the specification showed that, as used in the claim, solder reflow temperature means peak reflow temperature rather than the liquidus temperature Pointed to a preferred embodiment, where it was stated that liquidus temp was about 190º C and a peak reflow temp of about 210º - 218º C. The Example stated that the temperature of the solder was raised to 210º C, and the device was raised to 195ºC, above the liquidus temperature. If “solder reflow temperature” meant liquidus temperature (190ºC), the example would not be covered by the claims because the temperature of the device (195ºC) would not be below the liquidus temperature FRAMEWORK FOR CLAIM CONSTRUCTION

39. 39 Vitronics (con’t) – –Conceptronics relied heavily on expert testimony that “solder reflow temperature” is synonymous with liquidus temperature, supported by technical articles – –Conceptronics also relied on the testimony of the Chief Engineer of Vitronics, who said the reflow temperature of the solder was 183ºC, the liquidus temperature. But in other testimony that witness said the patent used reflow temperature to refer to peak reflow temperature. FRAMEWORK FOR CLAIM CONSTRUCTION

40. 40 Vitronics (con’t) – –Conceptronics also relied on a paper written by a former employee of Vitronics, stating that reflow of the solder occurs at 183ºC. But that same paper also talked about bringing the temperature of the solder about 15 to 25ºC above the alloy melting point to achieve full liquidus and assure good solder flow. – –Also relied on a Vitronics memo, staging that solder has a “liquidus” or “reflow” temperature of about 183ºC. Later the memo discussed whether the temperature of the devices was maintained below the temperatures at which the solder is reflowing. FRAMEWORK FOR CLAIM CONSTRUCTION

41. 41 Vitronics (con’t) – –DC: JMOL of no infringement construed “solder reflow temperature” as 183°C Did not indicate which evidence it relied upon FRAMEWORK FOR CLAIM CONSTRUCTION

42. 42 Vitronics (con’t) – –FC: Reversed and remanded Proper sources for guidance: intrinsic evidence: such as specification and file history and extrinsic evidence, such as expert testimony. “It is well-settled that, in interpreting an asserted claim, the court should look first to the intrinsic evidence of record, i.e., the patent itself, including the claims, the specification and, if in evidence, the prosecution history. [citation omitted] Such intrinsic evidence is the most significant source of the legally operative meaning of disputed claim language.” FRAMEWORK FOR CLAIM CONSTRUCTION

43. 43 Vitronics (con’t) – –FC: Order “First, we look to the words of the claims themselves, both asserted and nonasserted, to define the scope of the patented invention.” Normally give claims their ordinary meaning. “second, it is always necessary to review the specification to determine whether the inventor has used any terms in a manner inconsistent with their ordinary meaning. …the specification is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.” (emphasis added) FRAMEWORK FOR CLAIM CONSTRUCTION

44. 44 Vitronics (con’t) – –FC: Order “Third, the court may also consider the prosecution history of the patent, if in evidence.” – –Exclude any interpretations disclaimed during prosecution – –Examine the prior art cited for clues as to what the claims do not cover FRAMEWORK FOR CLAIM CONSTRUCTION

45. 45 Vitronics (con’t) – –FC: Intrinsic over extrinsic In most situations, an analysis of the intrinsic evidence alone will resolve any ambiguity in a disputed claim term. In such circumstances, it is improper to rely on extrinsic evidence. 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. FRAMEWORK FOR CLAIM CONSTRUCTION

46. 46 Vitronics (con’t) – –FC: Intrinsic over extrinsic Allowing the public record to be altered or changed by extrinsic evidence introduced at trial, such as expert testimony, would make this right meaningless. FRAMEWORK FOR CLAIM CONSTRUCTION

47. 47 Vitronics (con’t) – –FC: Claim construction Meaning of “solder reflow temperature,” as can be seen from the example in the specification, “is clear from a reading of the claim itself and the patent specification.” (note the circularity re the specification; but after all: it is the single best guide!) – –"peak reflow temperature" (210 to 218ºC) and "liquidus temperature" (190ºC) are clearly defined in the specification as having distinctly different meanings – –In the example, the solder is heated to 210ºC, the temperature of the devices is about 195ºC, and the liquidus temperature is 190ºC FRAMEWORK FOR CLAIM CONSTRUCTION

48. 48 Vitronics (con’t) – –FC: Claim construction – –to be consistent with the specification and preferred embodiment, claim 1 must be construed such that the term "solder reflow temperature" means the peak reflow temperature – –“if ‘solder reflow temperature’ were defined to mean liquidus temperature, a preferred (and indeed only) embodiment in the specification would not fall within the scope of the patent claim. Such an interpretation is rarely, if ever, correct and would require highly persuasive evidentiary support, which is wholly absent in this case.” – –That should have ended the district court’s analysis! FRAMEWORK FOR CLAIM CONSTRUCTION

49. 49 Vitronics (con’t) – –FC: Claim construction DC erred in relying on extrinsic evidence when intrinisic evidence provided the meaning of the claim term” – –“where the patent documents are unambiguous, expert testimony regarding the meaning of a claim is entitled to no weight.” – –“Because the specification clearly and unambiguously defined the disputed term in the claim, reliance on this extrinsic evidence was unnecessary and, hence, legally incorrect.” FRAMEWORK FOR CLAIM CONSTRUCTION

50. 50 Vitronics (con’t) – –FC: Claim construction The expert testimony was inconsistent with the the specification (the prosecution history was not in evidence!) and should have been accorded no weight. Extrinsic evidence cannot be used to vary or contradict the claim language. Nor may it contradict the import of other parts of the specification. FRAMEWORK FOR CLAIM CONSTRUCTION

51. 51 Vitronics (con’t) – –FC: Claim construction If the patent documents are unambiguous, expert testimony regarding the meaning of a claim is entitled to no weight. Nor may the inventor’s subjective intent as to claim scope, when unexpressed in patent documents, have any effect. Note fn. 6: dictionaries are extrinsic evidence but may be consulted by judges and relied so long as the dictionary definition does not contradict any definition found in or ascertained by a reading of the patent documents. FRAMEWORK FOR CLAIM CONSTRUCTION

52. 52 Vitronics (con’t) – –FC: Claim construction A court in its discretion can admit and rely on prior art, whether or not in the specification or file history. The prior art can help to demonstrate how a disputed term is used by those skilled in the art. As compared to expert testimony, prior art may be more indicative of what those skilled in the art believe a term means. But that evidence is improper if one can understand from a careful reading of the public record. The prior art cannot be used to vary claim terms from how they are defined, even implicitly, in the spec or file history. FRAMEWORK FOR CLAIM CONSTRUCTION

53. 53 Vitronics (con’t) – –FC: Claim construction Here, the court used the extrinsic evidence to vary or contradict the manifest meaning of the claims. It would have been all right if the district court relied on the extrinsic evidence to help it understand the underlying technology. But, here, DC relied on that evidence to construe disputed claim terms. When patent documents are insufficient, dictionaries and prior art are a more reliable guide. – –sources accessible to the public in advance of litigation FRAMEWORK FOR CLAIM CONSTRUCTION

54. 54 APPLYING THE CORRECT CLAIM CONSTRUCTION FRAMEWORK Innova/Pure Water Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 72 U.S.P.Q.2d 1001 (Fed. Cir. 2004) (CLEVENGER, Rader, Linn) – –Invention: bottle filter cap – –DC: construed the term “operatively connected” – –A claimed filter assembly [to simultaneously cap the outlet and filter liquid poured out of the bottle through the outlet]... comprising a tube of filtering material and a cap having first and second substantially opposite surfaces... and “said tube operatively connected to said cap second surface at said tube second open end.

55. 55 APPLYING THE CORRECT CLAIM CONSTRUCTION FRAMEWORK Innova (con’t) DC: granted SJ of noninfringement construed “operatively connected” to require that the tube of filtering material be affixed to the cap, i.e., “not merely adjoining or abutting, but affixing the tube to the cap by some tenacious means of physical engagement that results in a unitary structure.” In Safari’s annular flange arrangement, the filter tube is “never affixed to the cap by some tenacious means of physical engagement” – –Safari's product suspends the tube of filtering material in the bottle mouth by means of an annular flange sealed in place by a cap screwed over the mouth of the bottle

56. 56 Innova (con’t) – –FC: Vacated and remanded DC erred in its interpretation of the term “operatively connected” “It is a bedrock principle of patent law that the claims of a patent define the invention to which the patentee is entitled the right to exclude.” Claim construction must begin and remain centered on the claim language itself. Accord the claim the meaning it would have to POSA at the time of the invention (clarified in Phillips to be the effective filing date of the application). APPLYING THE CORRECT CLAIM CONSTRUCTION FRAMEWORK

57. 57 Innova (con’t) – –“The inquiry into the meaning that claim terms would have to a person of skill in the art at the time of the invention is an objective one. This being the case, a court looks to those sources available to the public that show what a person of skill in the art would have understood disputed claim language to mean. Those sources include the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art.” (emphasis added) APPLYING THE CORRECT CLAIM CONSTRUCTION FRAMEWORK

58. 58 Innova (con’t) – –The written description provides a context for the claims and is appropriately resorted to “for the purpose of better understanding the meaning of a claim – –And for showing the connection in which a device is used. APPLYING THE CORRECT CLAIM CONSTRUCTION FRAMEWORK

59. 59 Innova (con’t) – –“A patent applicant thus has the flexibility to imbue new or old terms with a different meaning than they would otherwise have to a person of ordinary skill in the art. [citation omitted] All that is required is that the patent applicant set out the different meaning in the specification in a manner sufficient to give one of ordinary skill in the art notice of the change from ordinary meaning.” APPLYING THE CORRECT CLAIM CONSTRUCTION FRAMEWORK

60. 60 Innova (con’t) – –A patentee who notifies the public that claim terms are to be limited beyond their ordinary meaning to POSA will be bound by that notification, even where it may have been unintended. – –Longstanding difficulty: claims read in view of the spec vs. reading spec limitations into the claims. APPLYING THE CORRECT CLAIM CONSTRUCTION FRAMEWORK

61. 61 Innova (con’t) – –Where a patentee describes only a single embodiment, the claim will not be read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope using “words or expressions of manifest exclusion or restriction.” APPLYING THE CORRECT CLAIM CONSTRUCTION FRAMEWORK

62. 62 Innova (con’t) – –Conclusion: asserted claims do not require that the filter tube and cap be affixed to one another in a manner that results in the two components forming a unitary structure – –Reasoning: “operatively connected” is not a technical term having a special meaning in the art of water filtration – –It is a general descriptive term used in patent drafting to reflect a functional relationship between claimed components APPLYING THE CORRECT CLAIM CONSTRUCTION FRAMEWORK: CLAIM TERMS AND SPEC

63. 63 Innova (con’t) – –“Generally speaking, and as used in the '759 patent, it means the claimed components must be connected in a way to perform a designated function.” – –In the absence of modifiers, general descriptive terms are typically construed as having their full meaning. APPLYING THE CORRECT CLAIM CONSTRUCTION FRAMEWORK: CLAIM TERMS AND SPEC

64. 64 Innova (con’t) – –The DC’s initial understanding was that the ordinary and customary meaning of “operatively connected” requires the linking together of the tube and the cap to produce the intended or proper effect. – –DC erred when it proceeded beyond this plain meaning based on the “[e]xamples of means for connecting the tube to the cap disclosed in the '759 patent,” all of which reflect a “physical engagement [between the tube and the cap] that results in a unitary structure.” APPLYING THE CORRECT CLAIM CONSTRUCTION FRAMEWORK: CLAIM TERMS AND SPEC

65. 65 Innova (con’t) – –DC also erred when it interpreted the intended or proper effect to be the operation of “creating a filter assembly with a unitary structure. – –Instead, the proper designated function is the operation of the assembly, i.e. filtering. – –Thus, the tube is operatively connected to the cap when the tube and cap are arranged in a manner that affects filtering. APPLYING THE CORRECT CLAIM CONSTRUCTION FRAMEWORK: CLAIM TERMS AND SPEC

66. 66 Innova (con’t) – –Safari contended that for a connection to be operative for filtering, the structure for performing the filtering must be associated with a bottle, a limitation not found in claim 1. – –We disagree because the claims (see the preamble) and the written description (remember: it is the best single guide) reflect that an intended purpose for the claimed invention is for use with a bottle to filter water. APPLYING THE CORRECT CLAIM CONSTRUCTION FRAMEWORK: CLAIM TERMS AND SPEC

67. 67 Innova (con’t) – –In view of the preamble and other claim terms, the operation defined by controlling the flow of liquid through the tube of filtering material is the operation of filtering. – –Claim 15 is even more clearly directed to the operation of filtering: “said tube operatively connected to said cap second surface... and so that flow of liquid through said tube is primarily radial... during filtering. APPLYING THE CORRECT CLAIM CONSTRUCTION FRAMEWORK: CLAIM TERMS AND SPEC

68. 68 Innova (con’t) – –The function is also evident from the written description. – –“There is a significant demand for filtered drinking water.” – –“A filter assembly is provided... capable of effectively treating drinking water to remove... Contaminants therefrom....” APPLYING THE CORRECT CLAIM CONSTRUCTION FRAMEWORK: CLAIM TERMS AND SPEC

69. 69 Innova (con’t) – –Safari's interpretation largely reads the term "operatively" out of the phrase "operatively connected.“ – –Generally, all claim terms are presumed to have a meaning in a claim. – –If the claim refers in the abstract to the creation of a filter assembly structure, without any grounding as to intended use, the term is “operatively” is unnecessary as “connected” alone would have sufficed. APPLYING THE CORRECT CLAIM CONSTRUCTION FRAMEWORK: CLAIM TERMS AND SPEC

70. 70 Innova (con’t) – –Safari urges that the district court’s construction can be upheld because claim 15 used both “operatively connected” and “operatively associated.” – –The argument was that “connected” and “associated” must have been of different scope. APPLYING THE CORRECT CLAIM CONSTRUCTION FRAMEWORK: CLAIM TERMS AND SPEC

71. 71 Innova (con’t) – –For that argument to succeed, one must accept that “associated” was meant to define both nonphysical and physical attachment while “connected” was used in a narrower sense, incorporating only physical attachment. – –Safari urges that distinction based on the disclosed embodiments. APPLYING THE CORRECT CLAIM CONSTRUCTION FRAMEWORK: CLAIM TERMS AND SPEC

72. 72 Innova (con’t) – –The context does not make that clear. – ) –In one circumstance in the spec, Innova described the filter as “associated” with the cap. (interesting in terms of Johnston & Johnston case on dedication/disclaimer) APPLYING THE CORRECT CLAIM CONSTRUCTION FRAMEWORK: CLAIM TERMS AND SPEC

73. 73 Innova (con’t) – –“We decline to limit the claims based only on the disclosed embodiments in the written description.” – –Here, the patentee used different words to express similar concepts, even though that may have been confusing. APPLYING THE CORRECT CLAIM CONSTRUCTION FRAMEWORK: CLAIM TERMS AND SPEC

74. 74 Innova (con’t) – –Hence, Innova’s use of “connected” and “associated” should not be understood as different meanings context does not show that “connected” and “associated” should be differentiated – –“subject to any clear and unmistakable disavowal of claim scope, the term ‘operatively connected’ takes the full breadth of its ordinary meaning, i.e., ‘said tube [is] operatively connected to said cap’ when the tube and cap are arranged in a manner capable of performing the function of filtering.” APPLYING THE CORRECT CLAIM CONSTRUCTION FRAMEWORK: CLAIM TERMS AND SPEC

75. 75 Innova (con’t) – –Safari contends that the written description and prosecution history show clear and unmistakable disavowal of the full breadth of the meaning of “operatively connected.” – –Safari argues that if you read the written description as a whole, there is no disclosure of a tube and cap arrangement where the tube and cap are not affixed by some tenacious means. – –FC disagreed APPLYING THE CORRECT CLAIM CONSTRUCTION FRAMEWORK: CLAIM TERMS AND SPEC

76. 76 Innova (con’t) – –abstract: "The tube is operatively connected to the cap second surface at the tube second open end by sonic welding, a mechanical connection, or adhesively." – –“While a statement in the Abstract may operate as a clear expression of manifest exclusion, for several reasons, this statement does not.” Abstract contains general information Statement reflects the applicant's attempt to disclose the broad array of means by which the tube can be connected to the cap. APPLYING THE CORRECT CLAIM CONSTRUCTION FRAMEWORK: SPECIFICATION

77. 77 Innova (con’t) – –Further, Safari and the district court concluded that the term “mechanical connection” in the Abstract requires tenacious physical engagement. – –Spec: “a cap with which the filter is associated.” – –There is no requirement that there be tenacious physical engagement because “associated merely reflects that the recited elements be joined in some kind of relationship. – –That is “in contrast to, for example, SciMed, this language is less direct, clear, and defining than the phrase ‘[the] structure... is the basic... structure for all embodiments.’” APPLYING THE CORRECT CLAIM CONSTRUCTION FRAMEWORK: SPECIFICATION

78. 78 Innova (con’t) – –“kernel” of Safari's position: embodiments depicted in the figures and written description show “not merely adjoining or abutting, but affixing the tube to the cap by some tenacious means of physical engagement that results in a unitary structure.” – –Such a construction is not encouraged or presumed. – –FC: “the law does not require the court, where an applicant describes only a single embodiment, to construe the claims as limited to that one embodiment.” specification as a whole reflects the patentee's efforts to describe and claim all operative connections APPLYING THE CORRECT CLAIM CONSTRUCTION FRAMEWORK: SPECIFICATION

79. 79 Innova (con’t) – –Noted that the written description said that the operative connection can be mechanical – –Safari’s filter tube and cap uses a mechanical connection. APPLYING THE CORRECT CLAIM CONSTRUCTION FRAMEWORK: SPECIFICATION

80. 80 Innova (con’t) – –FC: prosecution history does not preclude construction – –Examiner made a §103 rejection stating that means of attaching are conventional and would have been obvious to provide alternative conventional attachment means. Applicant’s statement: – –In fact, it is believed that the dependent claims even more clearly and unequivocally distinguish from the art. For example, no place in either [prior art reference] are the mutually exclusive adhesive connection of claim 2, welding, (e.g., ultrasonic welding) of claim 3, or mechanical connection of claim 5 pointed out in the previous action or seen in the references, let alone the particular O ring connection recited in claim 6, or the particular mechanical connection flanges of claim 17. APPLYING THE CORRECT CLAIM CONSTRUCTION FRAMEWORK: PROSECUTION HISTORY

81. 81 Innova (con’t) – –“statement does not clearly and unambiguously disavow mechanical connections where the filter tube is not tenaciously physically engaged to the cap” “the argument that dependent claims, which require tenacious engagement, ‘more clearly... distinguish from the art’ does not mean that claims from which those claims depend are equally limited.” APPLYING THE CORRECT CLAIM CONSTRUCTION FRAMEWORK: PROSECUTION HISTORY

82. 82 Innova (con’t) – –The doctrine of claim differentiation normally means that limitations in dependent claims are not read into independent claims from which they depend. – –Thus, the argument that dependent claims which require tenacious engagement “more clearly... distinguish from the art” does not mean that claims from which those claims depend are equally limited. APPLYING THE CORRECT CLAIM CONSTRUCTION FRAMEWORK: PROSECUTION HISTORY

83. 83 Innova (con’t) – –Next: Examiner rejection: “[i]t would have been obvious to utilize the flange/projections of [the prior art]... to provide an alternative but equivalent connection means.” The claim addressed by the rejection literally claims a connection between the tube and cap that uses a flange extending from the filter tube to engage the cap. – –Applicant Response: For example, [the prior art] shows an axial filter that is sealed at the top and employs a mixture of anion and cation resins, using the flange to suspend the filter of ion exchange resins which operate in axial flow mode.... This is contrary to [other prior art] and the claimed invention. APPLYING THE CORRECT CLAIM CONSTRUCTION FRAMEWORK: PROSECUTION HISTORY

84. 84 Innova (con’t) – –Safari: this statement disavows the use of a flange to suspend the filter tube – –Innova: this statement was directed to the distinction of radial as opposed to axial filtering APPLYING THE CORRECT CLAIM CONSTRUCTION FRAMEWORK: PROSECUTION HISTORY

85. 85 Innova (con’t) – –FC: “Innova has the better argument. … we observe that the examiner understood Innova's statement to be referring to the filter: … Following this discourse, a telephone interview occurred, after which the examiner allowed the claim, unamended, and still directed to the use of a flange to make the tube-cap connection. This series of communications does not reflect the clear and unambiguous disavowal of caps and filters connected by mechanical means short of tenacious physical engagement. APPLYING THE CORRECT CLAIM CONSTRUCTION FRAMEWORK: PROSECUTION HISTORY

86. 86 Innova (con’t) – –FC: Rather, it reflects first, the examiner and applicant talking past one another. It reflects second, that the applicant was able to convince the examiner, by off the record communications, to retreat from her position. However unfortunate it is that the public and this court are prevented from knowing what arguments caused the examiner to abandon her position, the record finally reflects the examiner's acquiescence to the claim language chosen by the applicant. This is not clear evidence of the patentee's disavowal of claim scope.” (emphasis added) APPLYING THE CORRECT CLAIM CONSTRUCTION FRAMEWORK: PROSECUTION HISTORY

87. 87 Innova (con’t) – –Safari: rejection where the examiner describes a piece of asserted prior art as “considered to disclose a tubular filter attached to a cap as instantly claimed.” – –FC: “It is well settled, however, that it is the applicant, not the examiner, who must give up or disclaim subject matter that would otherwise fall within the scope of the claims.” (See Salazar, infra). APPLYING THE CORRECT CLAIM CONSTRUCTION FRAMEWORK: PROSECUTION HISTORY

88. 88 Sandisk Corp. v. Memorex Products, Inc., --F.3d--, Nos. 04-1422, -1610 (Fed. Cir. July 8, 2005) A favorable decision to patentees, particularly on prosecution history disclaimer/estoppel:A favorable decision to patentees, particularly on prosecution history disclaimer/estoppel: “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.“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. * * * *

89. 89 Sandisk Corp. (con’t) 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....

90. 90 Sandisk Corp. (con’t) The question, therefore, is whether any of SanDisk’s prosecution arguments to the examiner have no reasonable interpretation other than to disavow any memory system in which Flash EEprom memory cells are not grouped into partitioned sectors.”

91. 91 Sandisk Corp. (con’t) So, it looks like clear disavowal will depend on who has the better construction argument:So, it looks like clear disavowal will depend on who has the better construction argument: If you can establish that there is “no reasonable interpretation other than to disavow “ then there is disavowal.If you can establish that there is “no reasonable interpretation other than to disavow “ then there is disavowal. But, if you can establish there is non- disavowal reasonable interpretation, then there is no disavowal.But, if you can establish there is non- disavowal reasonable interpretation, then there is no disavowal. Here, the patentee established to the CAFC’s satisfication that there was a non-disavowal reasonable interpretation.Here, the patentee established to the CAFC’s satisfication that there was a non-disavowal reasonable interpretation.

92. 92 Sandisk Corp. (con’t) Claim: A method of operating a computer system including a processor and a memory system, wherein the memory system includes an array of non-volatile floating gate memory cells partitioned into a plurality of sectors that individually include a distinct group of said array of memory cells that are erasable together as a unit, comprising:Claim: A method of operating a computer system including a processor and a memory system, wherein the memory system includes an array of non-volatile floating gate memory cells partitioned into a plurality of sectors that individually include a distinct group of said array of memory cells that are erasable together as a unit, comprising: providing said memory array and a memory controller within a card that is removably connectable to the computer system, said controller being connectable to said processor for controlling operation of the array when the card is connected to the computer system, partitioning the memory cells within the individual sectors into at least a user data portion and an overhead portion....providing said memory array and a memory controller within a card that is removably connectable to the computer system, said controller being connectable to said processor for controlling operation of the array when the card is connected to the computer system, partitioning the memory cells within the individual sectors into at least a user data portion and an overhead portion....

93. 93 DC: SJ of no infringementDC: SJ of no infringement –construed claims to require that every cell in the memory device be grouped into a sector, and every sector be partitioned into user and overhead data portions –“SanDisk specifically limited its claim to include only those devices in which each sector within a memory cell array contains both overhead and user data. SanDisk cannot now argue that only some of the sectors of a memory cell array need to contain user data and overhead data.” –“[T]he court finds that SanDisk clearly and unmistakably disclaimed coverage of systems in which only some of the sectors in the array were partitioned into at least user data and overhead portions.” Sandisk Corp. (con’t)

94. 94 FC: Vacate and remandFC: Vacate and remand –trial court misread claims –erred in finding a prosecution disclaimer –reject argument that judicial estoppel forecloses SanDisk’s claim construction arguments –by its plain language, claims require only that the claimed memory system contain some memory cells, grouped into sectors, partitioned into user and overhead data portions. –“nothing in the language of claims 1 or 10 prevents the use of Flash EEproms containing cells that are not grouped into partitioned sectors.” –invention claimed using non-restrictive terminology Sandisk Corp. (con’t)

95. 95 FC: (con’t)FC: (con’t) –Preamble properly construed as limitation –“includes” = “comprising” –“nothing in their recitation excludes other configurations of memory cells on a physical device that, in some part, practices the claimed methods” Sandisk Corp. (con’t)

96. 96 FC: (con’t)FC: (con’t) –Rejection: The artisan would have been motivated to use Yorimoto’s EEPROM in the place of Burke’s memory because Yorimoto’s EEPROM can be partitioned into sectors and Burke’s emulation inherently suggests that the emulating memory should be able to emulate the sectors of Burke’s magnetic disk. –SanDisk’s argument: The memory cell array is divided into sectors, with the cells within each sector being erasable together as a unit. Stored in each sector is a sectors [sic] worth of user data and some overhead information (a header) about the sector and/or about the user data stored in the sector. –DC: SanDisk’s reference to “each sector” meant every sector on the prior art EEproms. –FC: “no clear and unmistakable disclaimer in this passage.” “each sector” means “each sector” subject to the claimed method, and no more“each sector” means “each sector” subject to the claimed method, and no more Sandisk Corp. (con’t)

97. 97 FC: (con’t)FC: (con’t) –Judicial estoppel applies only when: –(1) the party’s later position must be clearly inconsistent with the earlier position –(2) the party must have succeeded in persuading a court to adopt the earlier position in the earlier proceeding and –(3) the courts consider whether the party seeking to assert the inconsistent position would derive an unfair advantage or impose an unfair detriment. Sandisk Corp. (con’t)

98. 98 FC: (con’t)FC: (con’t) –Here, there was no judicial estoppel: –(1) earlier position was not clearly inconsistent –(2) equities here do not favor judicial estoppel; the present dispute only became an issue after further discovery. Sandisk Corp. (con’t)

99. 99 PROSECUTION HISTORY IN CLAIM CONSTRUCTION N. Am. Container, Inc. v. Plastipak Packaging, Inc., --F.3d--, 2005 WL 1645620 (Fed.Cir. July 14, 2005) (LOURIE, Bryson, and Linn) – –Invention: one-piece plastic bottles – –Improves resistance to creep and other forms of deformation by controlling (1) the presence of unoriented polymer chains in the base portion of the bottle and (2) the thickness of the walls of the reentrant portion.

100. 100 PROSECUTION HISTORY IN CLAIM CONSTRUCTION N. Am. Container (con’t) – –Invention controlled the distribution of unoriented material in the base portion and introduced more material into the reentrant portion. – –Fig. 12 is a “particularly preferred embodiment.”

101. 101 PROSECUTION HISTORY IN CLAIM CONSTRUCTION N. Am. Container (con’t) – –The claim limitations at issue: “wherein said inner wall portions are generally convex” and limitations reciting that the diameter of the reentrant portion is a percentage of overall diameter of the bottle’s base.

102. 102 PROSECUTION HISTORY IN CLAIM CONSTRUCTION N. Am. Container (con’t) – –DC: SJ of noninfringement Construed “generally convex” as “mostly convex.” – –allowed the outer walls of the base portion to have straight and concave points, as long as the majority of points along the walls were convex – –additional restriction based on prosecution history of a disclaimer of inner walls with any concavity » »for the inner walls of the base portion, “generally convex” required a majority of convex points along the inner wall and no concave points.

103. 103 N. Am. Container (con’t) – –DC: Construed “re-entrant portion” for non-footed bottles as the wall portions of the base that in cross-section begin at the lowermost point on which the bottle rests, and then rise towards the center for footed bottles as the wall portions of the base that in cross-section begin at the lowermost point on which the bottle would rest if the feet were removed, i.e., the lowermost point on the web bottom, and then rise towards the center “re-entrant” connotes a region where the bottom of the bottle turns upward, thereby "re-entering" the interior volume of the bottle a hollow extending into the bottle at a depth of 3.75 times the maximum thickness of the re-entrant portion an “up-turn only equal to about the thickness of the material” does not fall within the scope of the limitation PROSECUTION HISTORY IN CLAIM CONSTRUCTION

104. 104 N. Am. Container (con’t) – –Prosecution history originally-filed claims were rejected as obvious over prior art patent teaching a container having a base portion comprising a generally convex, annular surface having a central re-entrant portion Applicant amended claims by specifying that the shape of the inner walls in invention was "generally convex.“ Claims with “generally convex” limitation allowed PROSECUTION HISTORY IN CLAIM CONSTRUCTION: AMENDMENTS

105. 105 N. Am. Container (con’t) – –Applicant’s Remarks “The independent Claims 15, 24 and 33 have been amended to refer to the convex nature of the inner wall portions of the central re-entrant portion (i.e. those wall portions disposed inwardly of the lowermost points of the base upon which the container rests).... The shape of the base as now defined in the claims differs from those of both the Dechenne patent, wherein the corresponding wall portions 3 are slightly concave... and the Jakobsen patent, wherein the entire re-entrant portion is clearly concave in its entirety. This is also generally true of all of the prior art known to the applicant and/or referred to by the examiner.” PROSECUTION HISTORY IN CLAIM CONSTRUCTION: ARGUMENTS TO EXAMINER

106. 106 N. Am. Container (con’t) – –FC: affirm SJ of noninfringement based on “generally convex” limitation vacate SJ of noninfringement for certain productsbased on “re-entrant portion” limitation: – –Sustained inlcuding the lowermost points of the inner walls. – –It was error to impose a reentrant portion depth-to-thickness ratio of 3.75. PROSECUTION HISTORY IN CLAIM CONSTRUCTION

107. 107 N. Am. Container (con’t) – –FC: applicant, through argument during the prosecution, disclaimed inner walls of the base portion having any concavity – –“high standard required in order to show a prosecution disclaimer” met – –to overcome an obviousness rejection, applicant distinguished invention from prior art patent on the basis of the latter disclosing inner walls that are “slightly concave.” – –“inescapable consequence of such an argument is that the scope of applicant's claims cannot cover inner walls that are ‘slightly concave.’” – –“logically follows that the scope of applicant's claims is also limited to inner walls of the base portion with no concavity.” PROSECUTION HISTORY IN CLAIM CONSTRUCTION: ARGUMENTS TO EXAMINER

108. 108 N. Am. Container (con’t) – –FC: Note that “generally convex” limitation is construed differently as relates to inner and outer walls of the base portion – –Normally same limitation given same construction, but in this case, applicant's argument during prosecution disclaiming any concavity for the inner walls means that the “generally convex” limitation for the inner walls of the base portion cannot be given the same construction as the outer walls PROSECUTION HISTORY IN CLAIM CONSTRUCTION: ARGUMENTS TO EXAMINER

109. 109 N. Am. Container (con’t) – –FC: Construction means claims do not cover certain embodiments disclosed in the patent, but such a construction “is compelled when narrowing amendments are made in order to gain allowance over prior art.” I also appeared that certain embodiments in the specification had no convex points. no error in construing the term “generally” to mean a majority of points: terms of approximation need not be construed with mathematical precision. PROSECUTION HISTORY IN CLAIM CONSTRUCTION: ARGUMENTS TO EXAMINER

110. 110 N. Am. Container (con’t) – –FC: Agreed with DC’s construction of “re-entrant portion” to the extent that it includes the lowermost points of the inner walls – –Consistent with the “particularly preferred embodiment” in Fig. 12 – –consistent with the prior art's usage of that term and relied on the Dechenne patent cited by the Examiner. PROSECUTION HISTORY IN CLAIM CONSTRUCTION: ARGUMENTS TO EXAMINER

111. 111 N. Am. Container (con’t) – –FC: Agreed with DC’s construction of “re-entrant portion” to the extent that it includes the lowermost points of the inner walls – –all of the disclosed embodiments are “recessed” from the lowermost point of the base portion (or the web bottom, for footed bottles) to the central portion – –Strongest confirmation: During prosecution, applicant argued that "[t]he independent [c]laims... have been amended to refer to the convex nature of the inner wall portions of the central re-entrant portion (i.e. those wall portions disposed inwardly of the lowermost points of the base upon which the container rests )." PROSECUTION HISTORY IN CLAIM CONSTRUCTION: ARGUMENTS TO EXAMINER

112. 112 N. Am. Container (con’t) – –FC: Modified construction requiring an inward depth-to- thickness ratio of 3.75 – –Limitations that do not other appear in the claims should not be imported from the specification unless required by the specification. PROSECUTION HISTORY IN CLAIM CONSTRUCTION: ARGUMENTS TO EXAMINER

113. 113 N. Am. Container (con’t) – –FC: Modified construction requiring an inward depth-to- thickness ratio of 3.75 – –DC erroneously imported specification's recommended dimensions for a commercial embodiment of the bottle into the claims – –The annual, convex surface and generally convex inner walls ensure that the reentrant portion is a hollow that re- enters the bottle, thus reciting an inward depth-to- thickness ratio is extraneous. PROSECUTION HISTORY IN CLAIM CONSTRUCTION: ARGUMENTS TO EXAMINER

114. 114 PROSECUTION HISTORY: DOES SILENCE = “NOTICE” TO PUBLIC? Salazar v. Procter & Gamble Co., --F.3d--, No. 04- 1013 (Fed. Cir. July 8, 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”

115. 115 WHAT HAPPENED DURING PROSECUTION? Salazar (con’t) – –Examiner Rejected original independent claim 1 as obvious Objected to dependent claims 2 and 3 as allowable subject matter dependent upon a rejected base claim – –Applicant canceled claims 1-3 introduced new claim 7 based on allowable subject matter of claim 3 – –Examiner allowed claim 7 without rejection Examiner’s Statement of Reasons for Allowance: “ Claim 7 now incorporates previously held allowable subject matter.... Although the patent to Clemens appears to have the recited structure, Clemens’ ‘rods’ 22 are made of nylon, which is not considered ‘elastic’. Obviously the ‘rods’ of Clemens are flexible, but are not considered to be ‘elastic’ as recited by the claim.”

116. 116 WHAT HAPPENED DURING PROSECUTION? 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)

117. 117 WHAT HAPPENED DURING PROSECUTION? 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”

118. 118 WHAT HAPPENED DURING PROSECUTION? Salazar (con’t) – –Vacated portion of the district court’s claim construction excluding nylon from falling within the scope of the claims. – –Affirmed the meaning of elastic, and remanded to see whether the accused products met that limitation. – –Interestingly, note 4 says Festo presumption does not apply (“truly cosmetic” amendment). – –Where does that leave Honeywell?

119. 119 WHAT HAPPENED DURING PROSECUTION? Salazar (con’t) – –Bryson, dissenting patent suggests that the stimulator rod and the bristles are made of different materials, which contributes to the differences in their functions While true that, in general, an inventor has no affirmative obligation to respond to an examiner’s characterization of a claim, in this case, examiner’s statement related directly to the ground on which the patent was issued

120. 120 WHAT HAPPENED DURING PROSECUTION? Salazar (con’t) – –Bryson, dissenting statement indicates how a person of ordinary skill in the art would understand the claim term “elastic” in the context of the patent “When an applicant sits idly by while an examiner explains that he understands particular claim language to have a particular meaning and only regards the invention as patentable based on that meaning, the applicant should face a heavy burden in later challenging the examiner’s interpretation.” “absence of any indication that the patentee intended the claim term to be broader supports the district court’s conclusion that the ‘elastic’ stimulator rods should not be construed to include rods made of nylon”