Claims III Patent Law – Prof Merges 10.28.2010. Issue Preclusion/Collateral Estoppel – Patent Claims Is claim interpretation by District Court A binding.

442 F3d 1331 1338 ndash p 5

The district court then defined ldquosales informationrdquo as ldquodata stored in a computer which is involved in the promoting and selling of a bookrdquo and that the term is not limited to promotional information but includes descriptive information as well such as price

The defendants argue that the district court construed and instructed the jury on ldquosales informationrdquo too broadly They argue that the patent specification and prosecution history require that ldquosales informationrdquo always includes information that is promotional in nature and that the term is not met by the provision of only price and identifying information such as title or ISBN

ldquoIt is therefore an object of the invention to provide a book manufacturing system which is capable of storing data corresponding to the text and color graphical cover of tens of thousands of different books as well as promotional sales text and color graphics for aiding the consumer in choosing a book for purchase and facilitate the high speed manufacture of a single copy helliprdquo -- Ross patent spec

We agree with the defendants that the prosecution history requires this claim construction for the inclusion of promotional information was a material distinction from the prior art Mr Ross stressed that in his invention a customer can browse among books based on information concerning the substantive content of the book

The defendants argue that ODMC disavowed this interpretation in order to obtain the patent and represented to the patent examiner that the inclusion of promotional material is what distinguishes this invention from the prior art

Disavowal Rambus Inc v Hynix Semiconductor Inc569 FSupp2d 946 (NDCal2008)

Rambuss references to the specification show that a DRAM SRAM or ROM may be a memory device but the specification does not clearly limit the term ldquomemory devicerdquo to a single chip Because the specification does not clearly limit the scope of the invention to a single chip the court declines to read the phrase ldquomemory devicerdquo so narrowly Accordingly the court adopts the Manufacturers construction A ldquomemory devicerdquo is ldquoa device in which information can be stored and retrieved electronicallyrdquo It need not be on a single chip

The Ross specification repeatedly reinforces its usage of the term ldquocustomerrdquo as the retail consumer Although we agree with the district court that the Ross invention does not concern itself with whether the ldquocustomerrdquo reads the book or obtains it for resale the focus of the Ross patent is immediate single-copy printing and binding initiated by the customer and conducted at the customers site -- p 8

ldquoCustomerrdquo

hellip

[5] commanding a computer to print the text of

a selected one of said books in response to a customers selection

The Ross specification repeatedly reinforces its usage of the term ldquocustomerrdquo as the retail consumer See col 7 lines 24-25 (ldquoAll customer actions are conducted within customer console 103rdquo) col 15 lines 59-60 (ldquothe customer seats himself or herself in front of computer screen 157rdquo as depicted in Fig 2) col 2 lines 8-12

(ldquoif the consumer wishes to purchase a book he may either pay for the book through a store clerk or the consumer may enter his credit card into the systemrdquo) The specification distinguishes ldquogeneral purpose machines not specifically designed to be consumer operated for the on demand automatic manufacturing of a single book at the point of salerdquo

The district courts definition of ldquocustomerrdquo cannot eliminate these constraints in order to embrace the remote large-scale production of books for publishers and retailers

ldquoProviding Means for a Customer to Visually Reviewrdquo Clause [4] of

Claim 8

bull Includes providing a computer or kiosk to the ldquocustomerrdquo

bull None of the defendants do this

bull Again look to the specification

442 F3d 1331 1340 ndash p 7ODMC argues that the patentee did not disavow

the standard dictionary meaning of ldquocustomerrdquo and that the Ross invention is not limited to any specific kind of customer However when the scope of the invention is clearly stated in the specification and is described as the advantage and distinction of the invention it is not necessary to disavow explicitly a different scope

Reading in limitations (bad) vs interpreting (good)

ldquoMeans for a customer to visually reviewrdquo does not include elements in the patent specification which are referred to as being preferable [but not essential] and thus a customer seat and ambient light are not included

Disavowal

Astrazeneca AB v Mut Pharm Co 384 F3d 1333 1339-40 (Fed Cir 2004)

Where the general summary or description of the invention describes a feature of the invention (here micelles formed by the solubilizer) and criticizes other products (here other solubilizers including co-solvents) that lack that

same feature this operates as a clear disavowal of these other products

From ldquodisavowalrdquo to prosecution history estoppel

bullWarner-Jenkinson and (most importantly) Festo in the Supreme Court

The Doctrine of Equivalents

bull Distinguish from ldquoliteral infringementrdquo

bull Distinguish from section 112 par 6 ldquomeans plus functionrdquo equivalents common law doctrine

Warner-Jenkinson arguments in Sup Ct

bull What did petitioner W-J argue

ndash DOE Dead

ndash DOE should be narrowed

1952 Act and the DOE

bull Peripheral claiming

bull Reissue

bull PTO role

bull Sec 112 Par 6 ndash ldquomeans plus functionrdquo claims

ndash Specific provision implies repeal of general DOE

Proper Scope of DOE

bull ldquoOverall equivalentrdquo vs ldquoelement-by-elementrdquo analysis

bull Judge Nies dissent key

What does this mean ndash element-by-element

bullWhat exactly is an element

What does this mean ndash element-by-element

ldquosubjecting an aqueous solution to ultrafiltration [1] through a membrane having a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90rdquo

Hypothetical accused product

bull Completely new type of ldquoaqueous solutionrdquo that promotes separationpurification

ndash Lower hydrostatic pressure needed

ndash Broader pH range permissible

Some cases said

bull ldquoAs a wholerdquo standard

ndashAccused product might infringe

bull Other casesNies dissent

ndashNo infringement inder DOE here

Prosecution History Estoppelbull Limit on DOE

bull Topic for Festo tomorrow

United States Patent 4189380 Booth et al February 19 1980 Salt addition in ultrafiltration purification of solutions of polymeric colorants

The ultrafiltration purification of aqueous solutions of polymeric colorants wherein low molecular weight impurities are removed in an ultrafiltrate leaving a purified polymeric colorant-bearing retentate is carried out with improved efficiency when during at least two diavolumes of ultrafiltration the salt content of the retentate is maintained above about 1 by weight

bull Inventors Booth Robin G (Palo Alto CA) Cooper Anthony R (Los Altos CA) Assignee Dynapol (Palo Alto CA) Filed November 18 1976

Original Claim ndash Rebhahn Application

In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having a nominal pore diameter of 5-15 Angstroms under a hydrostatic pressure of approx 200-400 psig to thereby cause separation of said impurities from said dye

Amendment

Added this phrase (claim limitation) to the claim

at a pH from approximately 60 to 90

Booth reference pH Above 90

In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having [1] a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90 to thereby cause separation of said impurities from said dye

Original Claim Scope

Original Claim Scope

Narrowed Scope after amend-ment

Accused product ultra-purifica-tion at 95 pH

No Infringement under DOE

X

Accused Product pH of 50 ndash can Hilton-Davis assert infringement under DOE

bull United States Patent 4354125 Stoll October 12 1982 Magnetically coupled arrangement for a driving and a driven member

The invention is concerned with a magnetically coupled arrangement for a driving and a driven member which arrangement is operable by a pressure medium and is used in a conveying system A slidable piston (16) within a tube (10) has an arrangement of annular magnets (20) provided at each end with sealing and sliding members (24 26) A driven assembly (18) slidable on the outer surface of the tube (10) has an arrangement of annular magnets (32) corresponding to the magnets (20) and provided at each end with a sliding ring (44) The members (24 26 44) prevent ingress of foreign bodies to the magnet locations and consequently enable the spacing between the magnets and the tube (10) to be very small A good magnetic coupling is achieved resulting in effective transmission of power Several pistons (16) abutting one another can be used for conveying heavy loads

Inventors Stoll Kurt (Lenzhalde 72 D-7300 Esslingen DE) Appl No 153999Filed May 28 1980