Patent 14, 15. Infringement and Defenses
Claim Construction
MML 324-57; 35 U.S.C. §§ 112, 271
- Patent claims define a patent owner's legal rights
- A broader claim is easier to invalidate since it encompasses more potential prior art
- 36 USC s.271(a) "Except as otherwise provided in this title whoever without authority makes, uses, offers to sell, or sells any patented invention, within the
United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent."
o Broad rights, don't care about D's state of mind, as patent has system of claims (unlike copyright) which put people on notice

But 271 did not state relationship between infringement analysis and claim  court developed common law
Types of infringement
- Direct vs. indirect

Active inducement
 E.g. prodding instructions

Contributory
 e.g., selling non-staple article of commerce known to be specially designed for infringing use
- Literally vs. non-literal
Structure of Infringement Analysis
- Plaintiff's Patent (specifically, the claims): Legal Document vs. Defendant's "accused product" (or process): Real World Thing
- Comparing P's patent to D's accused product

1. Construe what the patent claim means

2. Literal infringement: whether D's product literally infringe P's patent

3. If not, test non-literal infringement

4. If neither  no infringement

Note: don't be distracted by what D is doing in the market
- Patentee have right to exclude others from doing it, but doesn't mean they have right to do it themselves (may be blocked by law/ other patents)
1) Patent Claiming and Claiming Formats
- Evolution of patent claiming: from central claims to peripheral claims

Central Claims: in late 1820s, it is common to include a formal designation of the claimed invention in a separate para at the end of the specification  describe the entire invention
(despite most parts have been long known and used), and then distinctly set forth what is claimed as new at the end of the specification (like sign posts indicating that this (and things sufficiently similar to it) were protected by patent

Peripheral Claiming: ~1836, use linguistic formulations to delineate the metes and bounds of the claimed invention (fence posts that define outer bounds of the patent right)
 Patentee should understand and correctly describe what he has invented and for what he claims a patent

1 Patent

The Claim should define the limit of that exclusive use which is secured to the inventor by the patent
[Policy: so the public is put on notice whether they are within the scope and need license  as s.271(a) do not require state of mind]

Claim formats
Difficult to make them as broad as the prior art and other patent doctrines will allow
S.112(b)-(f) guide the drafting of patent claims:
o (b) Conclusion The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
o (c) Form. A claim may be written in independent or, if the nature of the case admits, in dependent or multiple dependent form.
o (d) Reference in Dependent Forms. Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
o (e) Reference in Multiple Dependent Form. A claim in multiple dependent form shall contain a reference, in the alternative only, to more than one claim previously set forth and then specify a further limitation of the subject matter claimed. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim. A multiple dependent claim shall be construed to incorporate by reference all the limitations of the particular claim in relation to which it is being considered.
o (f) Element in Claim for a Combination. 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.

Infringement Analysis
- Claim construction:
o Validity

Comparison of claimed invention and accused device
- Assess claim language as of the time of invention/ filing
- Patentee: broader it is, block more later patent; but more likely it would be invalid (novelty…etc.)
2) Judicial Claim Construction
- Construction of patent claim is important to evaluating infringement and validity  can affect or determine the outcome of unenforceability, enablement and remedies
- Role of Juries: claim construction doesn't go to the jury, but didn't state it's a question of law

Question of Law
 Claim Construction Markman (nowadays confirmed it is a question of law)
 Definite claiming
 Prosecution history estoppel
 Implied license 2 Patent



o

o

o

Repair, not reconstruction
Equitable defenses: unclean hands (inequitable conduct before PTO, patent misuse),
Laches, Estoppel
 Relief: injunction
Question of Fact
 Validity: utility, novelty, inventorship, abandonment, inadequate description,
 Infringement: whether the claim as interpreted by the judge covers the alleged infringer's product or process; literal, DOE or reverse DOE
 Relief: damages, lost profits, reasonable royalty, willful infringement
Question of Law that are based on underlying questions of fact
 Statutory Subject Matter
 Nonobviousness
 § 102(b) on-sale bar
 § 102(b) public-use bar
 § 102(b) printed publication bar
 Enablement Prior inventor
Unresolved Questions of Law/Fact
 Equivalents determination under § 112(f)Constructive Evidence

Intrinsic evidence
 Claim (ordinary and customary meaning of the words)
 Specification and drawings
 Prosecution history

Extrinsic evidence
 Dictionaries and treatises
 Expert testimony
 Other evidence outside of the public recordWhy is claim construction a question of law?
o Claims are written evidence, which is traditionally within expertise of the court

But: patent is a public document that gives right, if patent document often modified by judgements  difficult for public to assess, would lack consistencyContrast with statutory and Contract interpretation

Ordinary meaning presumption:
 Textualisms in Bill interpretation
 Contract interpretation begins with plain meaning, four corners rule

Intrinsic evidence
 Legislative history in Bill interpretation
 Parol evidence in contract interpretation

Extrinsic evidence:
 Policy in Bill interpretation
 All things considered in contract interpretationMarkman v Westview Instruments (Supreme Court 1996)

3 Patent
Held: Claim construction is a matter for the court, hence beyond jury's province  judges are better equipped to construe the meaning of patent claim terms, given their training and experience interpreting written instruments

Emergence of pre-trial 'Markman hearings'  issue a claim construction order
 Held in conjunction with a technology tutorial provided by the attorneys or technical experts
 Such rulings often provided the basis for summary judgment determinations on issues of validity and infringement

Jury trial became very popular in patent infringement cases

Markman hearing: usually happens before trial, but after discovery, to determine claim construction, so parties can predict the outcome of the case

Markman brought claim construction out into the open  producing voluminous jurisprudence on how to construe claims  Court high reversal rate (40%)  Fed Cir saw need to clarify and harmonies claim construction jurisprudence
Not all review over DC's decision on claim construction are de novo oPhilips v AWH Corporation (CA Fed. Cir. 2005) (en banc  heard by all judges) P.330

Philips invented a prison wall and obtained '798 patent on modular, steel-shell panels that can be welded together to form vandalism-resistant walls  bought suit against AWH for infringement

DC granted summary judgement for non-infringement:
 Claim 1 "internal steel baffles inside the shell increases its load bearing capacity" 
but accused product did not contain 'baffles"
o P appealed and panel of Fed. Cir. Affirmed
 Majority held noninfringement: adopted plain meaning of the term "baffles"
 Patent uses the term 'baffles' in a restrictive manner
 Excludes structure that extend at a 90-degree angle from the walls
 Dissent:
 should not supplement the plain meaning of the claim language with a limitation from the preferred embodiment
 Should adopt general purpose dictionary definition of the term
CA reversed, found infringement:
o No clear test, but CA set Claim construction standards:
 Should look at intrinsic evidence  then extrinsic evidence (dictionary)
 Fact specific

Whether 'Baffle' include angle to the panel of 90-degree? [0:05]
 No, since it would be unlikely to deflect bullets if baffle comes in 90-dgree
 Drawing provides examples but should not restrictively imply that no other degrees are included
 Patentee often draft claims from the broadest to the narrowest
 Broader independent Claim  Claim 1
 Narrower/ specific dependent Claim  Claim 2
 E.g. "baffle may be orientated in degrees that deflecting projectiles" but there are other advantages of baffles, baffles are not only to deflect projectiles 
baffles can also be 90-degree
 Court: patentee is not describing everything, depending on the context, the patentee was thinking broader 4 Patent

o

o

Perspective: claims are construed from the standpoint of the PHOSITA
 As inventors are PHOSITA and patens are intended to be read by them
 Look to whether there are industry specified meanings
Time period: Claims are construed as of the time of the invention; or the effective filing date [court treats the 2 dates as interchangeable, although they are not]

Evidentiary Sources:
 Intrinsic preferred as extrinsic are prepared for litigation and unbounded (allowing picking and choosing)

1. Intrinsic Evidence shall be the principal basis for construing claims
 Claim (ordinary and customary meaning of the words)
 Not just ordinary meaning, e.g. cases disagreed over meaning of 'or' 'a'
'when' 'to' 'through'
 Should focus on context - there may be no ordinary meaning to a term in a field
 Specification and drawings Claims must be read in view of the specification
 Is the claim term broader or limited to the embodiments/ examples given?
Held: shouldn't restrict to embodiments
 Prosecution history Prosecution history provides evidence of how the PTO and inventor understood the patent, created by the patentee in attempting to explain and obtain the patent (but often lacks clarity as it's an ongoing negotiation)
 Patentee may have amended wording used

2. Extrinsic Evidence are permissible sources, but cannot contradict intrinsic evidence
 Expert testimony
 Helpful in providing background on the technology, explain how an invention works, ensure court's understanding of technical aspects of the patent is consistent with PHOSITA, establish particular meaning of a term
 But manipulatable and not in public record in the same way as books are 
would lead to ambiguity
 [Inventor testimony is usually biased, should be what PHOSITA and not inventor's interpretation that matters]
 Dictionaries There is no presumption in favour of dictionary definitions
 Has to be at the time of invention/ filing
 Texas Digital System v Telegenix (2002) placed too much reliance on extrinsic sources and too little on intrinsic sources  improperly limiting the role of the specification in claim construction to serve as a check on the dictionary meaning of a claim term.
 May extend patent protection beyond what should

Starting with broad dictionary definition may fail to appreciate how the specification implicitly limits that definition

Different dictionaries may contain different sets of definitions for the same word  parties may choose whichever definition they like the most

Dictionaries may simplify ideas for the public
 There is no heavy presumption in favor of ordinary meaning o

5 Patent




Court may examine terms' particular meaning in a field of art, to find out what a
PHOSITA would have understood disputed claim language to mean, may look at technical dictionaries
Other claims of the patent can be valuable source of meaning of a claim term
 May find out how PHOSITA would have interpreted, at the time of invention/ filingShould not confine claims to embodiments of the invention described in the specification

If a patent describes only a single embodiment, the claim of the patent must not be construed as being limited to that embodiment

The manner in which the patentee uses a term within the specification and claims usually will make it apparent whether the patentee is setting out specific examples of the invention to teach and enable PHOSITA to make and use the invention and to provide a best mode of doing so, or to be strictly coextensive

Whether claimed inventions limited to these Embodiments (examples given in specification);
or are they merely illustrativeMeyer - Dissent: claim construction is not a matter of law, but of fact.
o Court struggle to establish standards for interpreting claims  there can be no workable standard by which the court will interpret claims if we are blind to the factual component

Claims should be interpreted from the perspective of PHOSITA, at the time of invention

Markman hearings  they are often longer than jury trials, where expert battle over
 who qualifies as one of ordinary skill in the art,
 meaning of patent terms to that person,
 state of art at the time of invention,
 contradictory dictionary definition & which would be consulted by the skilled artisan,
 scope of specialised terms,
 the problem the patent was solving,
 what is related/ pertinent art,
 whether a construction was disallowed during prosecution,
 how one of skill in the art would understand statements during prosecution

Would be wasteful to require such proceedings, should remand cases which claim construction is not dispositive to DC for trial  Should allow more deference to DC
 Good to have consistency on what a term means, but people in the field may be using the term differently from how court interpret it

3) Canons (principles) of Claim Construction P.346
- Claims are construed from the PHOSITA's point of view as of the patent's filing date
- Evidence outside of the claims can be used only to understand and interpret, not to vary or limit, the terms of the claim
- A claim should normally be interpreted to read on the patentee's preference embodiment
- Ordinary vs. Contextual or "Particular" Meaning

Claims are skeletal, specifications tell people in the art how to make and use the invention

As a starting point, Fed Cir often presume the meaning of words in a claim is the 'ordinary',
i.e. non-contextual, meaning that would be assigned to those words

6 Patent
Contextual meaning: if specification and prosecution history consistently refer 'board' as
'wooden boards', patentee cannot later claim that the meaning of 'board' is not limited to a thing made of wood
Lexicographer Rule:
o Term may be specifically defined in the patent specification

Patentees are free to define claim terms in any way they wish

Often used when looking for contextual/ particular meaning
Disclaimer of Subject Matter

Disavowal (denial) doctrine: patentee may have affirmatively disclaimed a certain meaning through the language in the specification or statements made during patent prosecution
Requires clear and unambiguous disavowal to alter claim scope
Court resists efforts to change the ordinary meaning of claim terms through disclaimer, esp.
when it is based on the prosecution history rather than the specification o---Claim Differentiation: contextual meaning from other claims

Non-redundancy principle: e.g. meaning of 'board' in claim 1 could not logically be limited to 'wooden boards', because claim 16 specifically claimed a 'wooden board'  interpreting claim 1 as 'wooden board' would render claim 16 meaningless.
o [BUT: patent drafters are often aiming for redundancy]
o All claims must mean something different, e.g. Dependent claim suggest independent claim is broader

Patent applicant may claim relatively similar things in different claims  but applicant may feel this give them insurance in case one claim is shot down

Benefit patentee - have more claims to be more covered

Depending claim often help court to visualize what the patentee thinks is the heart of their invention
Purpose or Goal of the Invention

Court look at the 'fundamental purpose and significance of the patented invention' as contextual clue for court to find the meaning for a claim term
Construing Claims to Preserve their validity [but not widely enforced]
o Presumption of validity after patent is granted

But 'last resort,' patent claim drafters should not rely on courts to save their patents from inadvertent drafting errors

Court would not change the clearly stated claim language
Narrow Construction Preferred

Upon the contra proferentem contract law principle, claims should be interpreted against the draftsperson

If 2 alternative meanings are equally likely, choose the narrower one

Restrict patentee  forces them to be clear, or the narrower one would rule

To encourage more clarity and less opportunism by patent drafters

Every word counts  careful when drafting
Note: cannons may conflict each other  unpredictable results

Summary: Principal claim construction principles:
Factors that favor narrower construction
- Description of invention 7

Buy the full version of these notes or essay plans and more in our Intellectual Property (IP) Law Outlines.