Week 5: Claim Scope and Infringement

Claim scope and infringement

Week 5: Claim Scope and Infringement

“Claim Scope … Infringement”
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Summaries

  • Week 5: Claim Scope and Infringement > Claim Scope > Claim Construction
  • Week 5: Claim Scope and Infringement > Claim Scope > Claim Construction in the Courts
  • Week 5: Claim Scope and Infringement > Claim Scope > Interpretive Process of Claim Construction
  • Week 5: Claim Scope and Infringement > Claim Scope > The Phillips Case
  • Week 5: Claim Scope and Infringement > Infringement > Patent Infringement
  • Week 5: Claim Scope and Infringement > Infringement > The Doctrine of Equivalents
  • Week 5: Claim Scope and Infringement > Infringement > Literal Infringement
  • Week 5: Claim Scope and Infringement > Infringement > Prosecution History Estoppel
  • Week 5: Claim Scope and Infringement > Infringement > Infringement Analysis

Week 5: Claim Scope and Infringement > Claim Scope > Claim Construction

  • Here, a horizontal surface, a vertical surface, and at least four legs.
  • Those are the components of my invention, and those turn out to be the elements of my claim.
  • The reason I do that is because that allows me to be both very specific about what my invention is, that it has these three components, that exactly how they relate to each other can be defined, and yet be very broad about what it is I cover.
  • So there’s an ability to capture within the scope of my claims anything that has a generally horizontal surface, a vertical surface, and four legs.
  • That potentially infringes whether one would ordinarily call it a chair or not.
  • So claim drafting is the exercise of coming up with words and phrases, language that describes your idea in a way that is both very specific and yet very broad. And the exercise of claim construction is trying to figure out what it is that a person of skill in the art would understand when reading those words.
  • This appears to be a very simple claim.
  • A horizontal surface, a vertical surface, and at least four legs.
  • So what about part A, chair A there? That would seem to infringe.
  • It has a generally vertical surface, the back of the chair.
  • Part B or chair B is a little bit more complicated because look at the difference.
  • What chair B has is a vertical component, but is that a surface, or is it something else? Is it not a surface? Is it a series of slats? Or is it a framework or something like that? That’s what claim construction is all about.
  • Trying to determine whether the word “surface” in the vertical surface component of my claim encompasses both chairs A and B, or whether it merely captures A and not B. And that’s what the exercise of claim construction does.

Week 5: Claim Scope and Infringement > Claim Scope > Claim Construction in the Courts

  • In Markman v. Westview Instruments in 1997, the Supreme Court, addressing a patent case involving dry cleaning technology- although the technology isn’t particularly important to the case at hand- described the process of interpreting patent claims as a mongrel practice- somewhere between traditional legal analysis, like interpreting a statute or a contract, and traditional fact finding, like technological fact finding or determining whether a particular fact exists.
  • Ultimately, what the court decided in Markman was to allocate that authority- allocate the authority for construing patent claims- to the judges.
  • What the court said was, first, judges are just going to be better- better than juries at interpreting written documents, because judges have been trained to do so.
  • Because of that training, the court thought that judges are just more likely to be good at it- and good meaning to be predictable, coherent, and clear when they do it.
  • The idea here is that with district courts all over the country interpreting patent claims, it’s important to have coherence, uniformity, and stability in the law.
  • Because all patent cases are appealed to the US Court of Appeals for the Federal Circuit, allowing judges to do the interpretive analysis means that they could then be reviewed by the Federal Circuit in a manner that allowed for that court- the higher court, the Federal Circuit- to exert more control over the way that the rules were being applied.
  • The court in Markman thought that that was important in the context of claim construction, because patent law is a nationwide property system, and it would be important to have the rules for claim construction to be the same in all parts of the country.
  • If you are litigating a patent in a federal district court anywhere in the country and the defendant is defending on the basis of the invalidity of the patent, which almost all defendants do, then the district court will be doing a validity analysis, and in doing so, will need to do claim construction.
  • Now that the Court of Appeals for the Federal Circuit is reviewing all of these, it puts the Court of Appeals for the Federal Circuit right at the center of the patent system by virtue of the Markman decision granting allocation of authority to the judges.
  • As I said before in Markman, the Supreme Court gave claim construction to the judges for functional reasons.
  • In Teva v. Sandoz in 2015, the Supreme Court revisited this question of allocation of authority, and in particular, the question of deference given to district court judges.
  • Although there’s been a lot of dissatisfaction about the rate of reversals and the difficulty that district courts have with claim construction, the Teva court only made a modest change and said that only certain kinds of fact finding related to claim construction- that which is extrinsic to the patent- would be subject to any deference, and that everything else, including the ultimate determination of claim construction, was still for the judge and still de novo.

Week 5: Claim Scope and Infringement > Claim Scope > Interpretive Process of Claim Construction

  • Does the word “baffles” include in it some sort of angular requirement, either that it be at 90 degrees or not 90 degrees, or does it not? And indeed in the Phillips case, there was a majority of the court that said that baffles must be angles other than 90 degrees to the wall.
  • The reason the majority said that the baffles had to be at angles other than 90 degrees was that the specification, the patent itself, described deflection as a purpose of the invention, in that 90-degree baffles were also pieces of the prior art.
  • The dissent says this is completely wrong, that there’s nothing in the actual language of the patent claim that says anything about the angle of the baffles at all, and that there’s no reason- because it’s the claim that determines the scope of the patent- that there’s no reason to introduce some sort of angular component.
  • This is illustrative of many, many cases in claim construction, which is the real question is, how to integrate a patent claim, and the language in a patent claim, with the rest of the patent document, which might describe something either differently, or slightly narrowly, or even sometimes entirely different? How do you integrate those two things together when you know that at the end of the day, it’s the claims that really matter? But at the same time, the claims must be interpreted in light of what’s in the patent document itself.
  • So this really produces two distinct ways of thinking about patent claim construction- one which I call the holistic approach and one which I call the procedural approach.
  • This would be like the majority in the Phillips case, where you look into the drawings, you look at the specification, you try and determine, using all of the information you can put your hands on, what it is that’s the most natural and most correct reading of the particular term in dispute.
  • What it does is it focuses almost entirely on the ordinary meaning of a patent claim, and then goes from there into the specification and the rest of the patent document but only looking for a reason to overcome the ordinary meaning.
  • So you might look in the dictionary and see what the term “baffles” meant, for example.
  • Then you would look in the patent document and see if there’s any reason to deviate from that ordinary meaning.
  • You can think of the procedural approach as the one where the panel dissent said baffles can be at any angle, because there’s nothing about the word “baffles” that says 90-degree angle.

Week 5: Claim Scope and Infringement > Claim Scope > The Phillips Case 

  • What they said was that there is really no magic formula for conducting claim construction.
  • That there’s no particular process you need to follow, there’s no particular evidence that you must use or cannot use, and what matters is for the court to attach the appropriate weight to be assigned to the various sources for claim construction in light of the statutes and policies that inform the patent law.
  • Now, that’s a very vague and difficult to decipher statement about claim construction.
  • Claims are ordinarily given their ordinary meaning at the same time claims are intended to be read as part of the specification.
  • Other than this final statement here, which is that what really matters is not the formula, not the sources, but to try and attach the appropriate weight to each of the sources of evidence that you might use to determine claim meaning according to what the patent law would demand and the policies of the patent law would demand.
  • What this means as a practical matter is that when courts are faced with claim construction analyses, they are given and cited cases by the parties involved in the dispute that say very different things, very contradictory all the time.
  • So that although ordinary meaning is important and can often be crucial to understanding how a claim- what the claim scope is or what a claim term means, that at the end of the day, the right meaning is the one that is most naturally integrated into the rest of the document.
  • So if you count all Federal Circuit opinions on claim construction from 1996 through the end of 2012, you’ll find in the pre-Phillips phase, from 1996 to about 2005, 2006, you’ll find about 35% holistic and about 65% percent procedural, 34%, 66%. That’s about the components.
  • Now, as we talked before, the Phillips case identified this problem between holistic- this distinction between holistic and procedural, and sought to remedy it.
  • So what has happened since the case in Phillips is that although the court and Phillips tried, it’s said, to resolve the issue and claim construction in a way that the court could agree on one particular methodological approach going forward, the reality is they really have not.
  • 2/3 of the cases that go to the Federal Circuit are given a procedural approach to claim construction and 1/3 of the cases are given a more holistic claim construction.
  • All of these questions are central to or are derived from claim construction and will then be derived ultimately from which methodological approach you’re given.
  • Because the claim construction outcome is going to then be incredibly instrumental in everything else that occurs, you can say to no small degree that the identity of the judges at the Federal Circuit can in many cases determine the outcome of your entire case from top to bottom based on this issue of claim construction.

Week 5: Claim Scope and Infringement > Infringement > Patent Infringement

  • let’s move on to patent infringement and begin with the basics.
  • So what we mean by infringement is violating one of these rights to exclude.
  • There are really two categories of patent infringement that we talk about.
  • I sue somebody and I say you have infringed my patent, you are operating, you’re selling a product, you’re using or importing a product within the scope of my claims.
  • There’s another category of infringement that I wanted to flag for you, although we’re not going to cover it here.
  • You sue the person who’s enabling in some way or assisting in that infringement.
  • This is an important right because in many cases, there will be infringements that occur that only, for example, customers actually do.
  • The patent law allows me to go after that manufacturer as long as they are assisting in the infringement.
  • For this course, we’re going to talk about direct infringement of patents.
  • One is literal infringement and the other is infringement via the doctrine of equivalents.
  • The reason is is that literal infringement, and actually all forms of infringement, simply ask the question, is each element of the patent claim in the accused infringing device? So you go through each element of the patent claim- the wooden cylinder, the cylinder of graphite, the cylinder of eraser material.
  • You ask yourself, is it in the accused infringing device? And the fact that there may be extra things in the accused infringing device, like in this case, the small metal clip, doesn’t really matter to the analysis.
  • A plastic pencil is not going to be infringing under literal infringement because the patent claim specifies a wooden cylinder with a hollow core.
  • The small cylinder eraser material attached to one end of the wooden cylinder is simply missing in item three no infringement.

Week 5: Claim Scope and Infringement > Infringement > The Doctrine of Equivalents

  • The basic rule of literal infringement is that each and every element of the patent claim must be identically present in the accused device.
  • The basic rule of patent infringement under the doctrine of equivalents changes to all of the elements of the patent claim must be either identically or equivalently present in the accused infringing device.
  • So why would we do this? After all, the patent law emphasizes the public notice component of patent claims.
  • So if you think about a patent as akin to a land deed, for example- very nice, crisp borders surrounding a subject matter.
  • So within the patent, within the four corners of the claim, you have what is the patent’s scope.
  • Not only are claims themselves not this clear, but with the doctrine of equivalents, what we do is we put a grey zone around the edges of every single patent claim that’s out there and call it equivalence.
  • In the Graver Tank case from the 1950s, the Supreme Court said that unless we have the doctrine of equivalents, a patent is a hollow and useless thing.
  • The idea here is that if we didn’t have this zone- this zone of uncertainty, this grey area around the outside of the patent claim- it would be relatively easy for people to make minor changes, trivial changes, to the patent claim and avoid infringement, and thereby, undermine the value of the patent entirely.
  • It would turn the patent into a hollow and useless thing.
  • The courts have said that the doctrine of equivalents furthers the patent law incentive structure.
  • Of course, the way that it does that is by expanding the scope of the patent claims beyond what you would get otherwise.
  • Obviously, the broader your scope is, the more likelihood that you’re going to have coverage in the marketplace and the more benefits that you’re going to get from your patent.
  • In Warner-Jenkinson and some other cases, has said that the patentees- because the doctrine of equivalents is so embedded in our legal system, in our patent system- that patentees expect to get coverage.

Week 5: Claim Scope and Infringement > Infringement > Literal Infringement

  • So how does the doctrine of equivalent change things in terms of infringement? Let’s turn back to our literal infringement analysis, our writing implement claim- a wooden cylinder, a cylinder of graphite, a small cylinder of eraser material.
  • The plastic pencil is missing the wooden cylinder component.
  • The pencil without an eraser is missing the eraser cylinder component.
  • The doctrine of equivalent expands the scope of that patent claim and allows us to capture, for example, the plastic pencil.
  • What you ask, and what the court asks and a jury has to decide, is whether the function of the wooden cylinder and the plastic pencil are the same.
  • If the way they achieve that function are the same, and if the overall result of the two are the same, and if that’s true, then its equivalent.
  • Or, actually, the right way to say it would be vice versa, which is, a plastic pencil would be equivalent to the wooden cylinder with a hollow core, and therefore would infringe the claim.
  • The reason there is that the courts have been very clear that even though the doctrine of equivalents allows you to expand your patent claims, it allows you to find equivalent elements in the accused infringing device.

Week 5: Claim Scope and Infringement > Infringement > Prosecution History Estoppel

  • So how does the doctrine of equivalent change things in terms of infringement? Let’s turn back to our literal infringement analysis, our writing implement claim- a wooden cylinder, a cylinder of graphite, a small cylinder of eraser material.
  • The plastic pencil is missing the wooden cylinder component.
  • The pencil without an eraser is missing the eraser cylinder component.
  • The doctrine of equivalent expands the scope of that patent claim and allows us to capture, for example, the plastic pencil.
  • What you ask, and what the court asks and a jury has to decide, is whether the function of the wooden cylinder and the plastic pencil are the same.
  • If the way they achieve that function are the same, and if the overall result of the two are the same, and if that’s true, then its equivalent.
  • Or, actually, the right way to say it would be vice versa, which is, a plastic pencil would be equivalent to the wooden cylinder with a hollow core, and therefore would infringe the claim.
  • The reason there is that the courts have been very clear that even though the doctrine of equivalents allows you to expand your patent claims, it allows you to find equivalent elements in the accused infringing device.

Week 5: Claim Scope and Infringement > Infringement > Infringement Analysis

  • So how does the doctrine of equivalent change things in terms of infringement? Let’s turn back to our literal infringement analysis, our writing implement claim- a wooden cylinder, a cylinder of graphite, a small cylinder of eraser material.
  • The plastic pencil is missing the wooden cylinder component.
  • The pencil without an eraser is missing the eraser cylinder component.
  • The doctrine of equivalent expands the scope of that patent claim and allows us to capture, for example, the plastic pencil.
  • What you ask, and what the court asks and a jury has to decide, is whether the function of the wooden cylinder and the plastic pencil are the same.
  • If the way they achieve that function are the same, and if the overall result of the two are the same, and if that’s true, then its equivalent.
  • Or, actually, the right way to say it would be vice versa, which is, a plastic pencil would be equivalent to the wooden cylinder with a hollow core, and therefore would infringe the claim.
  • The reason there is that the courts have been very clear that even though the doctrine of equivalents allows you to expand your patent claims, it allows you to find equivalent elements in the accused infringing device.

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