PATENT LAW ISSUE ANALYSIS
· Claim Construction
o Q of LAW (reviewed de novo at Fed Cir) – Markman (exclusively a judge issue)
§ Cybor – Fed Cir reviews de novo. NO deference to dist ct. interpretation….
o Considered separately from validity
o Keystone Bridge – D can argue prior art to narrow claims in construction; patentee, however, cannot.
§ Don’t want to create a system that incentivizes going for broadest claims possible in prosecution, then getting to step back once you’re caught on it in litigation in order to avoid invalidity determination.
o Claim Construction Algorithm – Interactive Gift
§ Step 1 – Claim
· Look at other claims
· Determine ordinary meaning of words:
o Understood by one of ordinary skill in the art
o Dictionary definition
o Patentee definition (as own lexicographer)
§ Step 2a – if clear meaning from claim 1, look to spec and prosecution history.
· Only to see if this contradicts meaning derived from Step 1
· In case of clear contradiction, I guess these govern?
§ Step 2b – if NO clear meaning from claim 1, look at spec and prosecution history as AIDS.
· If clear – done
· If unclear – Other Extrinsic Evidence
o Claim Construction – TOTALITY APPROACH (Phillips)
§ Sources of information (in approximate order of importance):
· Claims
o Language in claim itself
o Other claims
§ Check for consistency of usage-
· If you decide a term has one meaning in Claim 1, do all the other claims with that term still make sense?
§ Doctrine of claim differentiation – if one interpretation gives 2 claims same meaning, that can’t be right. Interpret so that claims actually mean different things.
· In independent/dependent pairs, the dependent claim must have a narrower scope than the independent.
· Spec
o “usually dispositive, always highly relevant” (Phillips)
o Description of invention
o Lexicography or disclaimer
§ Note to self – this is why we should only talk about ‘embodiments’ in the spec, not the invention itself.
o Phillips takes the view that you ask what someone of skill in the art would make of the claims/spec.
o
· Prosecution History
o Less useful (Phillips court)
· Extrinsic Evidence
o Generally less reliable (by Phillips)
o Includes dictionaries, treatises, and expert witness testimony
§ NOTE – careful on using expert witness testimony with a QUESTION OF LAW
· SPECIFICALLY STATES – no magic formula, nor is court barred from analyzing any sources, nor is it required to analyze in a particular order – it’s all about attaching appropriate weight….
o Ex – Gillette :
§ Claim language alone leads to very broad construction.
· “A razor comprising … 3 blades …”
· Yet, spec talks about the problems of multi-bladed razors, distinguishing the 3-blade one here as special. Only discloses 3-bladed embodiments.
§ Here, spec used to NARROW the claim scope.
· Invalidity
o Requires a showing of invalidity by a preponderance of the evidence
§ This standard is higher than that for invalidity at USPTO: thus, best a court can do is find the patent “not invalid”
o Patentable Subject Matter
§ Is the claimed invention a process, machine, manufacture, composition of matter within 35 USC 101?
§ Is it a doubtful process? (MPEP 2106)–
· Determine whether claim covers a judicial exception or practical application of such
· Determine whether claimed invention:
o Transforms an article or physical object to a different state or thing (physicality) OR
§ Suggested useful, but not req’d, by In re Comiskey (Fed. Cir. 2007)
o Otherwise produces useful, concrete, and tangible result (“Practical application” test—bleeds in with Utility, it seems)
§ If it is either of the above, is it not one of
“Reasonable diligence” from just before other’s RTP until own RTP
· Anticipation Analysis
o 1 reference must disclose all elements (Prima)
o Species anticipates genus; not necessarily other way around though (a genus adds more elements/limitations to the species claim by its very nature—ex: a better mousetrap, although within genus of ‘mouse traps,’ is a new species)
o Inherency – Prima, even if unknown Schering (the Claritin case)
o “No Accidental Anticipation” (Tilghman)
o Enablement of prior art (lower standard than enablement in patent application) – Seymour, Hafner, Titanium~
o Non-obviousness
§ Graham v. John Deere Factors:
· Scope of the prior art
· Level of ordinary skill in the pertinent art
· Differences between the claimed invention and prior art
· Secondary Considerations: (Adams, Arkie, Hybritech)
o Commercial Success, long-felt unresolved need, , failure of others, licensing or other signs of ‘industry respect’, copying, acclaim, skepticism or teaching away, unexpected properties or results
o Nexus req’d between 2ndary factor and invention (Ormco)
§ Reason to Combine / TSM
· Can look for a teaching/suggestion/motivation to combine elements in the prior art (Dembiczak, B&W)
· However, need to address “reason-to-combine” analysis of KSR
o Suspicion of:
§ Combination of familiar elements
§ According to known methods
§ With predictable results
o Objectivity:
§ Analysis not restricted to problem inventor actually sought to solve
