Claims III Patent Law – Prof Merges 4.8.08. On Demand Post-Phillips claim construction – Role of spec – “Disavowal”

Claims III

Patent Law – Prof Merges

4.8.08

On Demand

• Post-Phillips claim construction

–Role of spec

–“Disavowal”

8. A method of high speed manufacture of a single copy of a book comprising the steps of:

[2] storing the text of a plurality of books in a computer,

[3] storing sales information relating to said plurality of books in a computer,

[4] providing means for a customer to visually review said sales information,

[5] commanding a computer to print the text of a selected one of said books in response to a customer's selection,

[6] retrieving the text of said selected one of said books from a computer,

[7] printing the text of said selected one of said books on paper pages,

[8] binding said paper pages together to form said selected one of said books,

[9] storing graphical information corresponding to the cover of each of said books,

[10] commanding a computer to reproduce said graphical information on a book cover, and

[11] binding said paper pages together with said cover therearound.

442 F.3d 1331, 1338 – p. 5

The district court then defined “sales information” as “data stored in a computer which is involved in the promoting and selling of a book,” 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 “sales information” too broadly. They argue that the patent specification and prosecution history require that “sales information” 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.

It 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 …. -- 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

Astrazeneca AB v. Mut. Pharm. Co., 384 F.3d 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.

The Ross specification repeatedly reinforces its usage of the term “customer” as the retail consumer. . . . Although we agree with the district court that the Ross invention does not concern itself with whether the “customer” 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 customer's site. -- p. 8

“Customer”

…

[5] commanding a computer to print the text of

a selected one of said books in response to a customer's selection,

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

(“if 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 system”). The specification distinguishes “general purpose machines ... not specifically designed to be consumer operated for the on demand, automatic manufacturing of a single book at the point of sale.”

The district court's definition of “customer” cannot eliminate these constraints in order to embrace the remote large-scale production of books for publishers and retailers.

“Providing Means for a Customer to Visually Review,” Clause [4] of

Claim 8

• Includes providing a computer or kiosk to the “customer”

• None of the defendants do this

• Again, look to the specification

Reading in limitations (bad), vs. interpreting (good)

“Means for a customer to visually review” 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.

442 F.3d 1331, 1340 – p. 7ODMC argues that the patentee did not disavow

the standard dictionary meaning of “customer,” 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.

From “disavowal” to prosecution history estoppel

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

The Doctrine of Equivalents

• Distinguish from “literal infringement”

• Distinguish from section 112 par. 6 “means plus function” equivalents: common law doctrine

Warner-Jenkinson arguments in Sup Ct

• What did petitioner W-J argue?

Warner-Jenkinson arguments in Sup Ct

• What did petitioner W-J argue?

– DOE Dead

– DOE should be narrowed

1952 Act and the DOE

• Peripheral claiming

• Reissue

• PTO role

• Sec. 112 Par. 6 – “means plus function” claims

– Specific provision implies repeal of general DOE?

Proper Scope of DOE

• “Overall equivalent” vs. “element-by-element” analysis

• Judge Nies dissent key

What does this mean – element-by-element?

•What exactly is an element?

What does this mean – element-by-element?

“subjecting 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 p.s.i.g. [3] at a pH from approximately 6.0 to 9.0”

Hypothetical accused product

• Completely new type of “aqueous solution” that promotes separation/purification

– Lower hydrostatic pressure needed

– Broader pH range permissible

Some cases said . . .

• “As a whole” standard

–Accused product might infringe

• Other cases/Nies dissent:

–No infringement inder DOE here . . .

Prosecution History Estoppel• Limit on DOE

• Topic for Festo tomorrow

United States Patent 4,189,380 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.

• Inventors: Booth; Robin G. (Palo Alto, CA); Cooper; Anthony R. (Los Altos, CA) Assignee: Dynapol (Palo Alto, CA) Filed: November 18, 1976

Original Claim – 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 p.s.i.g. to thereby cause separation of said impurities from said dye . . .

Amendment

Added this phrase (claim limitation) to the claim:

. . . at a pH from approximately 6.0 to 9.0 . . .

Booth reference: pH Above 9.0

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 p.s.i.g. [3] at a pH from approximately 6.0 to 9.0, 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 9.5 pH

No Infringement under DOE

X

Accused Product: pH of 5.0 – can Hilton-Davis assert infringement under DOE?

??

Is the DOE dying?

• Allison, John R. and Lemley, Mark A., "The (Unnoticed) Demise of the Doctrine of Equivalents" . Stanford Law Review, Vol. 59, 2007

• The doctrine of equivalents was already near death by the late 1990s. That became even more true after 2000. Reason: Markman

Signs of Life?

• A Massachusetts federal district court entered judgment Dec. 11 on a jury verdict that awarded DePuy Spine Inc. over $226 million for infringement under the doctrine of equivalents of a patent for a device for stabilizing spinal column segments (DePuy Spine Inc. v. Medtronic Sofamor Danek Inc., D. Mass., No. 01-10165-EFH, 12/11/07).

• UC v. DAKOCYTOMATION CALIFORNIA, INC., 517 F.3d 1364 (FC 2008)

• We thus conclude that appellants have met their burden of showing that the amendment did not surrender the equivalent in question . . . . Accordingly, the court erred in concluding that appellants are precluded by estoppel from asserting that Dako’s products infringe under the doctrine of equivalents. Whether they do infringe is a question of fact for the trial court to consider on remand.

Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 85 U.S.P.Q.2d 1275 (FC 2007): No infringement under DOE; “vertical opening” limitation