KIPO/KIPA U.S. IP Practice Program

Direct Infringement

Antigone G. Peyton September 21, 2010

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U.S. Patent Infringement

§ Violation of patentee right to exclude (35 U.S.C. § 271) § Patentee right ends when patent expires § Two types of infringement:

–  Direct infringement –  Indirect infringement

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Direct Infringement Acts

§ Make § Use § Offer to sell § Sell §  Import

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§ PTO interpretation of claims (patentability) § Court claim interpretation (claim construction–

infringement) – Markman hearings – Rules of claim interpretation – Literal infringement – Doctrine of equivalents

Direct Infringement–Overview

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PTO Claim Interpretation

§  “Broadest reasonable interpretation” of claims used

§ PTO uses this interpretation in

deciding whether to issue a patent

§ Different standard than Court

claim construction

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§ Step 1: Claim Construction –  Plain meaning of the words of the claim –  The specification –  The prosecution history –  Claim interpretation is a legal question

Court Infringement Analysis: Two–Step Test

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§ Step 2: Comparison of Interpreted Claim to Accused Device/Method –  All parts of claim found in accused

device/method? –  Patentee’s burden to prove infringement

by a preponderance of the evidence –  Question of fact, not law

Court Infringement Analysis: Two–Step Test

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Infringement

§ Claim Construction: Role of the Judge (Step 1) –  Decides what the claim means

§  Infringement? Role of the Jury (Step 2) –  Decides whether the claim is

infringed, based on the claim interpretation of the judge

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Markman Hearing (Claim Construction)

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Judge has discretion to decide:

§ Whether to hold a Markman hearing § When claim construction should occur § What evidence may be presented:

–  Live witnesses? –  Or just attorney argument?

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Markman Hearing

§ Oral Argument

– May be decided on the paper filings without hearing

–  Markman hearing may be scheduled

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Post-Judgment Proceedings

Pre-Litigation Investigation

Markman Hearing

Appeal Final Judgment

Trial

Markman Hearing

Answer

Complaint

Discovery

Pre-Trial Motions

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Markman Hearing

§ Timing –  Early in discovery –  Late in discovery –  During or after trial

§ Form –  Submit briefs and documents –  May be decided in connection with a

summary judgment proceeding –  May be altered by the Court, regardless of

original decision

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Advantages of Markman Determinations

§ Promote uniformity?

§ Encourage early settlement

§ Reduce litigation costs

§ Narrow issues

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No Immediate Appeal From Markman Decision

§ A Markman decision is “interlocutory,” meaning that it is not a final decision

§  It does not become final until after the judge enters a final judgment in the case

§ Federal Circuit will not hear any direct appeal from a Markman decision

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Unfavorable Markman Decision

§  If a party receives an unfavorable Markman decision, it has two choices: –  Go to trial on the construction

–  Concede a final judgment on all of the issues, and appeal the claim construction decision

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If a Patentee Receives a Favorable Markman Ruling . . .

GO FOR THE KNOCKOUT! (Summary Judgment of Infringement)

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Summary Judgment

§ No “genuine issues of material fact” in dispute § Moving party entitled to judgment as a matter of law § Avoids trial before judge or jury § Saves money and time § Reduces issues for trial

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Rules of Claim Interpretation

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Rules of Claim Interpretation

§ Two categories of information

–  Intrinsic evidence: claims; patent specification; prosecution history (considered 1st)

–  Extrinsic evidence: inventor testimony; treatises; expert testimony; documents not in patent record (considered 2nd)

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Priority of Intrinsic Evidence

§ Federal Circuit: look first at the intrinsic evidence –  Patent claims –  Specification –  Prosecution history

Phillips v. AWH Corp. (Fed. Cir. 2005) (en banc)

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Words of the Claim Are the Starting Point

§ Start with claim words § Patentee chose the claim language § Claims are construed objectively from view of

“One Skilled In the Art”

Interactive Gift Express., Inc. v. CompuServe, Inc. (Fed. Cir. 2001)

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“Heavy Presumption” Ordinary Meaning of Claim Should Apply § Unless “a different meaning clearly and

deliberately set forth in the intrinsic materials”–specification, prosecution history

–  Lexicography

§ Or unless the ordinary meaning of a disputed term unclear

–  Look at specification and prosecution history to see if term discussed

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Example: A Speaker Patent Claim

Claim 1: A dynamic sound adjustment system, comprising:

a housing;

a speaker located in the housing; and

an external sound sensor for monitoring the speaker.

Sensor

Housing

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Comparison of Prior Art with Patent and Accused Product

PATENT

Sensor

Housing

ACCUSED PRODUCT

Sensor

Housing

Sensor Speaker

PRIOR ART

Housing

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Intrinsic Evidence: Specification

§ Specification states: –  The external sensor permits the sensor

to be replaced without replacing the entire speaker

–  Locating the speaker externally also enables quick replacement should the sensor fail

§  Diagram with sensor external to housing

Sensor

Housing

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Intrinsic Evidence: Prosecution History

§  Applicant states in a Reply to Office Action:

“Applicants have amended claim 1 to recite an ‘external’ sensor. The external sensor enables replacement of the sensor without replacing the speaker.”

Sensor

Housing

Sensor

Housing

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Generally, Extrinsic Evidence Should Only be Used When:

§  If, after review of intrinsic evidence, claim meaning unclear –  This does not mean Court can’t consider

extrinsic evidence

–  Court should not rely on the extrinsic evidence if it contradicts the claim language, specification, and prosecution history (intrinsic evidence)

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Extrinsic Evidence

§ Dictionaries, treatises § Expert testimony § Less significant in determining the meaning of the

claims

Phillips v. AWH Corp. (Fed. Cir. 2005) (en banc)

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Dictionaries Can Provide Ordinary Meaning

§ Dictionaries may be acceptable for determining the ordinary meaning of a claim term

§ Not considered “prohibited” extrinsic evidence

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Example of Extrinsic Evidence

§  Patentee’s expert declaration (hired expert with 25 years experience in the industry):

“Having reviewed the entire record and in view of my years of experience in this field, it is my expert opinion that a person of ordinary skill in the art would understand the term “external” to mean anywhere outside the speaker, regardless of whether inside or outside the housing.”

Sensor

Housing

Sensor

Housing

or

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But wait!!!

§ Accused infringer’s expert’s declaration (with 32 years in the industry and the named inventor on 54 U.S. patents):

“Given my vast experience in the field, it is my expert opinion that a person of ordinary skill in the art would understand the word “external” in claim 1 to require the sensor to be on the outside of the housing.”

Sensor

Housing

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Extrinsic Evidence

§ Can use to give Court understanding of general technology

§ Court should not use it to “construe” claims, just understand the background of the invention

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Bottom Line on Use of Extrinsic Evidence

§ There is little chance of preventing its submission in briefs

§ Courts may permit extrinsic testimony, and decide later if they are going to need it

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Markman Decision

§  Judge makes decision on what claim terms mean (Step 1) §  Tells jury what claim terms mean (jury instruction) §  That meaning used during trial by experts §  Jury uses that meaning to decide whether accused infringer

has infringed the claim (Step 2)

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Two Types of Direct Infringement

§ Literal infringement

–  Accused product identically meets each part of a claim

§  Infringement under doctrine of equivalents

–  Accused product, while meeting all the claim elements, has an equivalent part to one or more claim elements

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Literal Infringement

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Literal Infringement

§ Each part of claimed invention found in accused device without changes

Claim 1: A dynamic sound adjustment system, comprising:

a housing; a speaker located in the

housing; and an external sound sensor

for monitoring the speaker.

Sensor

Housing

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Infringement Under Doctrine of Equivalents

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Infringement Under Doctrine of Equivalents

§ Element of accused device not identical to claimed element but is equivalent to it

§ Ways of determining whether it is equivalent: – Function-way-result test –  Insubstantial differences test – Other tests can be used

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Literal Infringement Versus Infringement Under DOE

Literal scope of claim Equivalents given to patentee

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Limiting Equivalents

§  All-elements rule

§  Prior art

§  Inherent narrowness of the claim language

§  Equivalent disclaimed in specification

§  Disclosed but not claimed (public dedication)

§  “Prosecution History Estoppel” doctrine (Festo)

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Limiting Equivalents: All-Elements Rule

§  Equivalent to individual claim element, not the invention as a whole

Warner-Jenkinson v. Hilton Davis Chemical Co. (U.S. 1997)

Example: DOE apples only to the sensor element

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Limiting Equivalents: Prior Art §  Equivalents cannot cover what is in or is obvious from the

prior art

§  Hypothetical claim test

–  Would a hypothetical claim that covers an equivalent also cover prior art?

PATENT

Sensor

Housing

Sensor Speaker

PRIOR ART

Housing

X

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Limiting Equivalents: Inherent Narrowness of the Claim Language

§ Some claim language has no scope of equivalence

– Claim recites “wherein said sensor is external to the housing . . .”

X

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Limiting Equivalents: Equivalent Disclaimed in Specification §  Statements in the specification expressly limit scope of the

“invention” –  The Specification states:

“Locating the speaker externally to the housing enables quick replacement should the sensor fail. The prior technology required removing the speaker housing to replace the sensor.”

X

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Limiting Equivalents: Disclosed but not Claimed (Public Dedication) §  Patent discloses equivalent but it is not in the claims-this action

dedicates that unclaimed subject matter to the public

–  The Specification states: “Locating the speaker externally or internally to the housing, but external to the speaker enables quick replacement should the sensor fail.”

BUT the claim recites only the “externally to the housing” element

X

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Limiting Equivalents: Prosecution History Estoppel

§ A patentee may not claim under doctrine of equivalents subject matter it surrendered to get its patent –  Two types:

•  Arguments made during prosecution •  Amendments made that narrow claim scope

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Purpose of Prosecution History Estoppel

§ Serve public notice function

–  Allow competitors to rely on the file history to determine what they may safely practice/design around

–  Patentee bears the cost of not seeking protection in claims for a foreseeable/known alternative

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Limiting Equivalents: Prosecution History Estoppel

§  Applicant states in a Reply to Office Action: Applicants have amended claim 1 to recite “wherein said sensor is external to the housing.” Thus, Applicant submits that the Examiner’s rejection of claim 1 under 35 U.S.C. section 112, regarding whether the sensor is placed internally or externally, can be withdrawn.

X

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Supreme Court’s Festo Test for Prosecution History Estoppel

§ Rebuttable presumption of surrender from any claim amendment made for any reason related to patentability

§ Must be a narrowing amendment –  Presume you loose coverage for area no longer claimed

Original Claim Allowed Claim

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Supreme Court’s Festo Test (cont’d)

§ Patentee must show estoppel does not apply

§ Overcome the presumption by showing “at the time of the amendment one skilled in the art could not reasonably be expected to have drafted a claim that would have literally encompassed the alleged equivalent.”

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Rebutting Presumption of Surrender

§ Three ways to overcome the presumption (examples): 1) the equivalent was unforeseeable at the time; 2) the rationale underlying the amendment bears

no more than a tangential relation to the equivalent in question; or

3) other reasons suggesting that the patentee could not reasonably be expected to have described the insubstantial substitute in question.

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Rebutting Presumption of Surrender

§ Must be based on information in the prosecution history

§ Gives notice to others about whether equivalents have been surrendered

§ Not based on attorney arguments during infringement suit

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Prosecution History Estoppel Chart

Did the amendment narrow the literal

scope of the claim? NO NO PHE

YES

For a substantial reason relating to patentability? NO NO PHE

Rebuttal evidence restricted to

prosecution history

NO REASON SHOWN Presumption

that reason is related to patentability

YES

Scope of subject matter surrendered?

1

2

3

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Scope of subject matter surrendered? 3

Festo presumption that patentee surrendered all coverage between

original claim limitation and amended claim

limitation

NOT REBUTTED

PHE bars patentee from relying on

DOE for element

REBUTTED

No PHE and equivalent

of element covered by claim

Show no surrender of

particular equivalent

Prosecution History Estoppel Chart

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Avoiding Prosecution History Estoppel

§ Claim term meanings should be consistent with the use of the terms in the specification and during prosecution

§ Subject matter disclosed in the specification should be recited by the claims

§ Be careful not to unnecessarily limit the scope of the claims during prosecution, especially in response to a rejection of the claims

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Conclusion

§ Careful patent prosecution is important! § Prosecution affects scope of claims and potential

coverage of infringers § Must live with what you say during prosecution § Silence when the patentee amends claims can cause

problems § Understand the prosecution history before you sue an

accused infringer