Patent Law
Miller
Fall 2011
Claim Interpretation
Rule: 35 U.S.C. § 112, ¶ 2: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim Interpretation Issue 1: What evidence can a court use in construing claim language?
Intrinsic evidence: Claims (asserted and unasserted), Specification, Prosecution history
Extrinsic evidence: (if there is some ambiguity), Everything else (experts, treatises, inventor)
Phillips v. AWH (Fed. Cir. 2005): Reaffirms heavy reliance on intrinsic evidence. Sets out an interpretive road map with an emphasis on context. Facts: the patent specifies baffles oriented at acute or obtuse angles other than 90 degrees from the wall face. Accused device used only 90-degree baffles. Does the original patent include perpendicular baffles? Analysis – To construe claim, look first at intrinsic evidence: Claims (asserted and unasserted); Specification (must consult); Prosecution history (if in evidence). Then consult the extrinsic evidence, which cannot contradict the intrinsic evidence, in this order (going down the list, decreasing reliability): Treatises/dictionaries (Telegenix practice of starting with the dictionary, rather than with the patent itself, is killed by Phillips); Prior art not in the prosecution history; Expert testimony; Inventor testimony
Claim Interpretation Issue 2: What if the intrinsic evidence is conflicting or leads to absurd results?
Martek (Fed. Cir. 2009): Does scope of animal include humans? Majority: Yes, explicit text overrides all else. Here 1) the inventor specifically defined “animal” and 2) there was no “clear and manifest disavowel” Dissent: No, must use “written description as a whole” and can override explicit text.
Haemonetics (Fed. Cir. 2010): Two claims have contradicting meaning, patentee argues for meaning that serves them in the infringement case. Court will not “we do not redraft claims to contradict their plain language in order to avoid a nonsensical result.” Policy: The risk on drafting error on the patentee, not public.
The 4 Disclosure Doctrines
Written Description, Best Mode, Enablement, Definiteness
Rules: 35 U.S.C. § 112 ¶ 1: The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertain, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. 35 U.S.C. § 112, ¶ 2: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
This is ideal. Problems arise when the claims are too narrow or broad.
Written Description Analysis: Ask whether the disclosure of the application reasonably conveys to the phosita that the inventor had possession of the claimed subject matter (a question of fact; the ultimate question of whether it enables is one of law). Example: Claim a red widget. Widgets of other colors might be enabled. But not valid under written description.
O’Reilly (U.S. 1854): Root of the modern disclosure doctrine. Claimed use of electricity to transmit communications, however never invented telegraph. Majority: Cannot claim what “he has not described and not invented.” Dissent: blocking patents that prevent improvements are routine.
Incandescent Lamp Case (U.S. 1895): Claimed use of fibrous material in lamp, but Edison had to test 6000 fibrous materials before he found that bamboo is the only one that works. Test: If the description is “so vague and uncertain” that no one can make the invention without “independent experiments” then the patent is not enforceable.
Enablement Analysis: A disclosure is sufficient if it enables a phosita to make and use the claimed invention with sufficient clarity, precision, and detail that “undue experimentation” is not required to practice it
National Recovery Technologies v. Magnetic Separation Systems (Fed. Cir. 1999): Here, the claim is broader than the enablement as taught in the specification; it only suggests a theoretical answer to the problem and provides only a starting point for further research. Rule: The scope of the claims must be equal or less than the scope of enablement. The scope of enablement is that disclosed in the specification and the scope of what would be known by the phosita without undue experimentation.
Enablement Issue 1: How much does the phosita know? How is that weighed?
Automotive Tech v. BMW: The novel aspect of the invention must be enable in the patent, other aspects may be filled in by the phosita’s knowledge.
Cedar Rapids v. Nordberg (Rock-crusher case): Size of machine is not in specification, but its important for gyrational speed
undaries are.
Exxon Research (Fed. Cir. 2001): Test – Claims are definite if “they are amenable to construction, no matter how difficult that might be.” Claims are indefinite if “reasonable effort at claim construction proves futile.” Standard – Preponderance (PTO), clear & convincing (D.Ct.)
Datamize v. Plumtree Software (Fed. Cir. 2005) (Aesthetically pleasing kiosk case): Notable b/c most indefiniteness claims lose, here it actually succeeded b/c Datamize provided no meaningful definition for “aesthetically pleasing,” nor has it provided an objective definition identifying a standard for it. Test – Claim scope “cannot depend solely on the unrestrained, subjective opinion of a particular individual purportedly practicing the invention” … “a claim term to be definite requires an objective anchor” (i.e. a shared verifiable metric). Here no such objective standard was disclosed in spec or claims, even expert couldn’t determine parameters. Datamize cites Orthokinetics (1986) but Court rejects their reasoning. No measurement for a wheelchair part. No table in the disclosure that guides the user. Infringer claims indefiniteness as a defense. Court says no, its obvious for phosita that you must measure the size of the door in a car to determine the size of the wheelchair part. It provides objective claim language boundaries.
Star Scientific v. RJ Reynolds: Is anaerobic conditions definite where the specification discloses 4 compounds which can be measured to determine if conditions have been met. According to Phillips claims are interpreted in light of the specification and therefore limitation is definite. Rule: Process claims are definite if they are well defined by measurable outputs (here the 4 compounds are sufficient). Rule: Definiteness does not require pre-practice predictability. Miller argues the other way: If the Court was concerned with clear boundaries, it should have applied a standard where the claims must give potential infringer notice. That wasn’t the case here.
