Patent Claim Drafting and Construction in 2013 Crafting Claims to Withstand Scrutiny and Avoiding Claim Limitation Attack Today’s faculty features: 1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific The audio portion of the conference may be accessed via the telephone or by using your computer's speakers. Please refer to the instructions emailed to registrants for additional information. If you have any questions, please contact Customer Service at 1-800-926-7926 ext. 10. WEDNESDAY, MARCH 20, 2013 Presenting a live 90-minute webinar with interactive Q&A Thomas L. Irving, Partner, Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C. Lauren L. Stevens, Of Counsel, Foley & Lardner, Palo Alto, Calif. Colin G. Sandercock, Partner, Perkins Coie, Washington, D.C.
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Patent Claim Drafting and Construction in 2013 Crafting Claims to Withstand Scrutiny and Avoiding Claim Limitation Attack
Who? In Markman v. Westview Instruments the Supreme Court
decided that judges were to decide the construction of claim terms because “[u]niformity would . . . be ill served by submitting issues of document construction to juries”
According to rule in Cybor, claim construction is reviewed by the Federal Circuit de novo and without deference to the lower court decision – Cybor Corp. v. FAS Technologies Inc., 138 F.3d 1448 (Fed. Cir.
1998)
– Thus the proper question on appeal is not whether the evidence supports the lower court's decision but instead whether the lower court made the correct determination.
In the denial of rehearing, Multiple dissents and concurrences over whether should have granted rehearing to debate Cybor rule of de novo review of claim construction.
– Retractable Technologies, Inc. v. Becton, Dickinson and Co., 653 F.3d 1296 (Fed. Cir. 2011), reh’g denied, 100 U.S.P.Q.2d 1714 (Fed. Cir. 2011), cert. denied (U.S. Jan. 7, 2013)
Question briefed: “Whether claim construction, including underlying factual issues that are integral to claim construction, is a purely legal question subject to de novo review on appeal.” (The Cybor Rule).
Lighting Ballast Control L.L.C. v. Philips Electronics North America Corp., en banc rehearing granted (March 15, 2013) – Rehearing granted in per curiam order, listing RADER, Newman,
Lourie, Dyk, Prost, Moore, O’Malley, Reyna, and Wallach.
– Order
Court’s opinion of January 2, 2013, vacated
Briefs address the following a.Should this court overrule Cybor Corp. v. FAS
(en banc) “The specification is always highly relevant to claim construction
and is the single best guide to the meaning of a claim term in dispute.” – Cites Vitronics: “The claims, specification, and file history, rather than
extrinsic evidence, constitute the public record of the patentee's claim, a record on which the public is entitled to rely and a guide that entitles competitors to apply the established rules and design around the claimed invention.”
– Extrinsic evidence is less significant than the intrinsic record in determining the meaning of claim language
Intrinsic will usually resolve issue without resort to extrinsic
More from Vitronics: “where the patent documents are unambiguous, expert testimony regarding the meaning of a claim is entitled to no weight.”
Reliance on extrinsic evidence undermines public notice
The words of a claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history.
Exceptions – when a patentee sets out a definition and acts as his
own lexicographer;
– when the patentee disavows the full scope of a claim term either in the specification or during prosecution.
It’s All About The Spec! Chimie v. PPG Industries, 402 F.3d 1371 (Fed. Cir.
2005) – Claim: essentially spheroidal precipitated silica particulates and
their process of manufacture (Micropearl®).
– Limitation at issue: “dust-free and non-dusting.”
– Specification contains ten examples of silica products and the results of several tests making comparisons among those products.
– Tests conducted included tests to measure the level of dust formed by the various silica particulates, including a test using the DIN 53 583 standard.
DIN test = German standard developed to measure certain physical properties of carbon black by determining the fines (dust) and weight loss by abrasion according to a defined procedure.
Abstract – see Howmedica Osteonics Corp. v. Tranquil Prospects, Ltd., 401 F.3d 1367, 74 U.S.P.Q.2d 1680 (Fed. Cir. 2005).
Abstract and Summary of Invention – see C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858 (Fed. Cir. 2004)(“Accordingly, other things being equal, certain sections of the specification are more likely to contain statements that support a limiting definition of a claim term than other sections[.]”).
Object of the Invention – see Stone Strong, LLC v. Del Zotto Products of Florida, Inc. (Fed. Cir. Oct. 17, 2011) (nonprecedential)
Boilerplate For example: “Although the invention has been
described with reference to a particular embodiment, this description is not meant to be construed in a limiting sense. Various modifications of the disclosed embodiments as well as alternative embodiments of the invention will become apparent to persons skilled in the art . . . . It is therefore contemplated that the appended claims will cover any such modifications or embodiments that fall within the scope of the invention.”
Will not override if specification indicates narrow construction is appropriate – Wireless Agents LLC v. Sony Ericsson Mobile Communications,
No. 06-1054 (Fed. Cir. July 26, 2006) (non-precedential)
Federal Circuit used the dependent claims as “a starting point”
– Court applied principles embodied in 35 USC 112, ¶4 Claim 2 recites concentrations of compound X
“from about 0.0001 w/v. % to about 5% (w/v),” and citing the principles that “a dependent claim cannot be broader than the claim from which it depends,” and “must incorporate . . . all the limitations of the claim to which it refers,” the Federal Circuit reasoned that the “effective amount” of claim 1 must cover at least the range recited in claim 2
Other than Examiner’s Statement of Reasons for Allowance, prosecution history contains no discussion of the “elastic” limitation by either the examiner or the applicant.
Do unilateral statements of an examiner in stating reasons for allowance create a clear and unambiguous disavowal of claim scope and give rise to prosecution history estoppel? – 37 C.F.R. § 1.109: examiner may set forth reasoning for allowing
claims, and applicant may file comments. “Failure to file such a statement shall not give rise to any implication that the applicant or patent owner agrees with or acquiesces in the reasoning of the examiner.”
– Fed. Cir. affirmed a nearly $ 4 million award of attorney fees and expenses
accused infringer argued successfully to the trial court that the patentee “engaged in litigation misconduct by, among other things… misrepresenting claim construction law to avoid intrinsic evidence”
case exceptional under 35 USC § 285 based in part on a conclusion that the patentee at the trial court had misrepresented the law of claim construction under Phillips
* These slides have been prepared solely for the Strafford Claim Construction Webinar and solely reflect the personal views of the author and not the views of Perkins Coie LLP, any other lawyer of the firm, or any of its past, present and future clients.
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Step 1
If the specification is already filed, then assess your risk that the specification provides a reason to narrow or alter the ordinary and customary meaning of your claim terms
The competing rules of claim construction
Rule 1: The specification may not be used to limit the claims
Rule 2: The specification may be used to limit the claims
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“[t]he written description part of the specification itself does not delimit the right to exclude. That is the function and purpose of claims.” Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (en banc)
“[A] court may not import limitations from the written description into the claims.” Laitram Corp. v. NEC Corp., 163 F.3d 1342, 1347 (Fed. Cir. 1998)
"this court has consistently adhered to the proposition that courts cannot alter what the patentee has chosen to claim as his invention, that limitations appearing in the specification will not be read into claims and that interpreting what is meant by a word in a claim ‘is not to be confused with adding an extraneous limitation appearing in the specification, which is improper.’" Intervet America Inc. v. Kee-Vet Laboratories, Inc., 887 F.2d 1050, 1053 (Fed. Cir. 1989) (citation omitted)
The specification may not be used to limit the claims
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“Although the claims of a patent define the invention for which the
patentee is entitled to an exclusionary right, we must read the claims ‘in
view of the specification, of which they are a part.’” Eon-Net LP v. Flagstar
inserted into claims), citing Phillips v. AWH Corp., Inc., 415 F.3d 1303, 1315
(Fed. Cir. 2005) (en banc)
“[T]he basic mandate is for claims to be interpreted in light of the
specification of which they are a part because the specification describes
what the inventors invented. (Citation omitted.) . . . In colloquial terms, ‘you
should get what you disclose.’” Arlington Indus. Inc. v. Bridgeport Fittings
Inc., 632 F.3d 1246, 1257 (J. Lourie, dissenting)
The specification may be used to limit the claims
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Does this help?
“Where a specification does not require a
limitation, that limitation should not be read . . . into the claims.” Specialty Composites v. Cabot Corp., 845 F.2d 981, 987 (Fed. Cir. 1988)
Query: when does the specification require that a limitation be read into the claims?
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Descriptions of “the invention” in the specification
repeatedly have been found to justify (necessitate)
limiting otherwise broad claim language
The Invention, the present invention, an aspect of the
invention
Summary of the invention
Objects of the invention
Does the specification use the term “Invention”?
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We agree with the district court that the claim term “fuel injection
system component” is limited to a fuel filter. . . On at least four
occasions, the written description refers to the fuel filter as “this
invention” or “the present invention”:
This invention relates to a fuel filter for use in the fuel line. . . .
According to the present invention, a fuel filter for a motor
vehicle is made from a moldable material. . . .
The public is entitled to take the patentee at his word and the word
was that the invention is a fuel filter.
Honeywell International, Inc. v. ITT Industries, Inc.,
452 F.3d 1312 (Fed. Cir. 2006)
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* * * we conclude that the district court correctly determined,
as to most, but not all, of the asserted claims … that requiring
automatic determination of finish tooth positions is a proper
construction. . .
The specification then indicates a clear emphasis in the patent
on [automatic determination] rather than human judgment to
determine final tooth positions. “A primary objective of the
present invention is to provide a practical, reliable and efficient
custom appliance automated design and manufacturing
system… .”
Ormco Corp. v. Align Tech., Inc., 498 F.3d 1307, 1313
(Fed. Cir. 2007)
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Eon-Net LP v. Flagstar Bancorp, 653 F.3d 1314
(Fed. Cir. 2011)
Claim 1. A multimode information processing system for
inputting information from a document or file on a
computer into at least one application program. . . .
We agree with Flagstar that the disputed claim terms are
limited to information that originates from a hard copy
document. The written description repeatedly and
consistently defines the invention as a system that
processes information derived from hard copy documents.
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Accentra, Inc. v. Staples, Inc. (Fed. Cir. Jan 4, 2013)
Our cases instruct that when a patent “describes the features of the ‘present invention’ as a whole, this description limits the scope of the invention.” … Applying that principle to claim 20 of the ’768 patent, we conclude that the claim is limited to track pulls that open automatically when the stapler handle and body are rotated away from the stapler base. The ’768 specification makes it clear that the automatic opening feature is central to the invention of that patent.
“present invention provides an automatic track opening function”
“improvement of the present invention is an automatic opening mechanism”
Slip Op. at 9-10
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Does the specification state that the invention includes or excludes a particular feature?
Where the specification makes clear that the invention does not include a particular feature, that feature is deemed to be outside the reach of the claims of the patent, even though the language of the claims, read without reference to the specification, might be considered broad enough to encompass the feature in question.
SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337 (Fed. Cir. 2001) (specification “actually limits the invention to structures that utilize misaligned taper angles”)
Does the specification contain words of
inclusion or exclusion?
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Although sometimes justified and/or unavoidable, language indicating that a feature (or its absence) is important, critical or required may cause a court to narrow otherwise broad claims
Inpro II Licensing S.A.R.L. v. T-Mobile USA, Inc., 450 F.3d 1350 (Fed. Cir. 2006) ("[a] very important feature of the µPDA in an aspect of the present invention is a direct parallel bus interface with a connector. . . .")
Andersen Corp. v. Fiber Composites, LLC, 474 F3d 1361, 1367 (Fed. Cir. 2007) (“[T]he successful manufacture of structural members for windows and doors requires the preliminary manufacture of the polyvinyl chloride wood fiber composite in the form of a pellet. . . .)
Tronzo v. Biomet, Inc., 156 F.3d 1154, 1159 (Fed. Cir. 1998) (“[a]nother extremely important aspect of the present device resides in the configuration of the acetabular cup as …a portion of a truncated cone”).
Does the specification contain words of criticality?
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Does the specification use words such as solely, eliminates,
reversed construction of “animal” that was contrary to definition in spec)
Add examples and/or written description of alternative
embodiments to make clear the breadth of key claim terms
Arlington Indus. Inc., 632 F.3d at 1254 (claims construction not limited
to split-ring embodiment because only one of four embodiments in spec
expressly described split ring)
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Step 4 (address the claims)
Draft additional claims to invoke claim differentiation
Additional/different language in other claims (including claims in related
patents) presumed not superfluous
See, e.g., Arlington Indus. Inc., 632 F.3d at 1254-5 (construction of
independent claim 8 requiring split-ring reversed because claim 1 contained
split-ring limitation whereas claim 8 did not; “importing a split limitation
improperly discounts substantive differences between the claims. Such
differences can be a ‘useful guide in understanding the meaning of particular
claim terms.’” Citation to Phillips omitted.)
Allergan v. Barr Labs (Fed. Cir. Jan. 28, 2013; Slip Op. at 11) (Claim
limitation N(R4)2 did not require the R4 substituents to be identical; “Asserted
claim 10 ultimately depends from claim 5 and expressly includes three
compounds with nonidentical R4 elements, including bimatoprost.”)
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Claim Differentiation
A limitation in a dependent claim creates the presumption that the
independent claim is not so limited. See, e.g., Phillips, 415 F.3d at 1312:
Other claims of the patent in question, both asserted and unasserted, can also be valuable sources of enlightenment as to the meaning of a claim term. (Citation omitted.) … For example, the presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim. (Citation omitted.)
But claim differentiation is just a presumption, and sometimes fails
“claim differentiation is a rule of thumb that does not trump the clear
import of the specification,” (citation omitted) and, in this case, the written
description defines the invention as a system for processing information
that originates from a hard copy document.
Eon-Net, 653 F.3d at 1323
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Delete Unnecessary Claim Limitations
Generally impermissible to read a limitation into a claim when that
limitation previously has been deleted from the claim
Regardless of why LMA amended its claims, we agree with LMA that
it would be improper to read a tube joint limitation back into the
backplate. (Citation omitted.) (“[D]efendant's insist[e]nce upon this
court's reading back into the claims limitations which were originally
there and were removed during prosecution of the application
– Claim 1. In an [sic] micronized anti-diabetic pharmaceutical
composition … the improvement which comprises: spray-dried
lactose as the preponderant excipient in said composition, ….
– Mylan’s micronized glyburide compositions used anhydrous
lactose as the principal excipient; they contain no spray-dried
lactose.
“Critical” “Key”
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Pharmacia (con’t)
– Upjohn’s “profane” arguments in response to rejection:
“As indicated in the specification, the use of spray-dried lactose is a critical feature of the present invention. Using lactose which is not spray-dried does not yield a formulation which is easily and readily manufacturable.”
“The key feature of the present invention is the particular type of lactose employed in the composition.”
“Critical” “Key”
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“Necessarily”
Although nothing in the claims or specification restricted the
claimed admixture to homogeneous admixtures, the profanity
“necessarily” in the arguments during prosecution resulted in a
narrow claim construction in Biovail Corp. Int’l v. Andrx