Patent Infringement And Defenses Outline

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.”

  • 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

    • 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:

• (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.

• (c) Form. A claim may be written in independent or, if the nature of the case admits, in dependent or multiple dependent form.

• (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.

• (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.

• (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:

  • 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

    • 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

    • ...

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