crafting claims to withstand scrutiny and avoiding...

Patent Claim Drafting and Construction Crafting Claims to Withstand Scrutiny and Avoiding Claim Limitation Attack

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TUESDAY, MARCH 13, 2012

Presenting a live 90-minute webinar with interactive Q&A

Thomas L. Irving, Partner, Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C.

Colin G. Sandercock, Partner, Perkins Coie, Washington, D.C.

Lauren L. Stevens, Of Counsel, Foley & Lardner, Palo Alto, Calif.

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CLAIM CONSTRUCTION

Presented by: Lauren L. Stevens, Ph.D.

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©2012 Foley & Lardner LLP

Claim Construction [P]atent claims are so universally

challenging to the non-specialist, that this court has converted the judicial need to understand them into an unruly cottage industry called "claim construction."

Circuit Judge Newman dissenting in Energizer v. U.S. International

Trade Commission, slip op. 2007-1197 (April 21, 2008).

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Why? • To clarify the meaning of claim terms • To more positively recite features that

were disclaimed during prosecution • To identify corresponding structure

and function for “means-plus-function” claims (35 USC § 112, paragraph 6)

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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”

1998 en banc holding of Cybor requires that claims be reviewed de novo and without deference to the lower court decision – 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

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How? Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)

(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

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First, construe claims – Intrinsic evidence

Claims Specification Prosecution

history, if in evidence

– Extrinsic evidence, if necessary

Then, compare claims as construed to accused product (infringement analysis) or prior art (invalidity analysis) or written description (§ 112 support analysis) – Literal infringement – DOE/PHE

Claim Construction 10


Start with the Claims 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

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It’s All About The Spec! Chimie v. PPG Industries, 402 F.3d 1371 (Fed. Cir.),

reh’g denied (May 24, 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.

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Chimie (con’t) – DC: Granted SJ of noninfringement.

“dust-free and non-dusting” ambiguous because it could not be read literally to mean that the invention creates no dust at all.

– Test results in written description indicated that the invention itself produced some dust, but less dust than the prior art.

– FC: Affirmed DC properly construed the disputed claim terms. Cite Vitronics: a literal construction of “dust-free and non-

dusting,” would not read on the preferred embodiment. Relative phrase which can only be understood in comparison

to the prior art -> written description to determine the scope. Only 2 of 10 examples constitute a product of the issued

claims. DC construction proper because “the only articulation of the

dustiness of the claimed invention is made with reference to the DIN 53 583 standard.”

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All Parts Of The Specification Are Fair Game 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)

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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)

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Reliance On Another Claim Monsanto v. Syngenta Seeds, Inc., 503 F.3d

1352 (Fed. Cir. 2007) – Claim 1 of ‘880 patent: 3-step process for generating an

original RO fertile transgenic plant containing DNA that provides herbicide resistance.

– Claim 4: A process comprising obtaining progeny from a fertile transgenic plant obtained by the process of claim 1 which comprise said DNA.

– DC: No infringement. Claim 4 is a dependent claim.

– Adds fourth step of obtaining progeny. Monsanto performed all of the steps of claim 1 prior to

issuance of the patents. Performance of last step of claim 4 alone is not infringement.

– -Fed. Cir.: Affirmed

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Monsanto (con’t) Monsanto argued claim 4 was single-step process,

not dependent claim. – Dependent language refers to novel starting material (fertile

transgenic plant previously obtained using claim 1 process) of the new process in claim 4.

– Determining dependency requires examination of new claim to see if refers to earlier claim and further limits that earlier claim.

– “Claim 4 clearly references another claim, not simply a starting material. The claim might have used express language to clarify that it only invoked the product of the process in claim 1 as a starting material, but did not do so. Instead, the claim language reads claim 1 into claim 4.”

– Claim 4 “only stands if all three steps recited in claim 1 have been performed.”

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Monsanto (con’t) Rejected argument that claim 4 is product-by-process claim.

– Even if claim 4 is a product-by-process claim, Syngenta would still have to perform the steps of the process of claim 1 to infringe.

– “[c]laim 4 would only have meaning according to the incorporation of the limitations of claim 1.”

Originally filed claim 30 (corresponds to claim 4) was “incontestably a dependent claim.” – 30. The process of claim 23 further comprising (iv) obtaining progeny from

said fertile transgenic plant of step (iii), which comprise said DNA.” (emphasis added).

– Upon amending that claim after prosecution closed, Monsanto explained that the claim amendments “[did] not introduce new matter and are allowable without further search or consideration.”

– Examiner accepted amendment as “directed to matters of form not affecting the scope of the invention.”

“These two statements underscore that Monsanto did not change a four-step claim (original claim 30) into a single-step claim (claim 4) with its amendment.

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Prosecution History • “The prosecution history limits the interpretation of claim terms so as to

exclude any interpretation that was disclaimed during prosecution.” Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576, 34 U.S.P.Q.2d 1673, 1676-77 (Fed. Cir. 1995)

• "Explicit statements made by a patent applicant during prosecution to distinguish a claimed invention over prior art may serve to narrow the scope of the claim.“Spectrum Int'l, Inc. v. Sterilite Corp., 164 F.3d 1372, 1378, 49 U.S.P.Q.2d 1065, 1068-69 (Fed. Cir. 1998)

• Explicit arguments made during prosecution to overcome prior art can lead to narrow claim interpretations because "the public has a right to rely on such definitive statements made during prosecution." Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1347, 47 U.S.P.Q.2d 1418, 1427 (Fed. Cir. 1998)

• “Prosecution arguments like this one which draw distinctions between the patented invention and the prior art are useful for determining whether the patentee intended to surrender territory, since they indicate in the inventor's own words what the invention is not.” MBO Laboratories, Inc. v. Becton, Dickinson & Co., 474 F.3d 1323 (Fed. Cir. 2007).

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Another Example • Viskase Corp. v. American National Can Co., 261 F.3d

1316, 59 U.S.P.Q.2d 1823 (Fed. Cir. 2001) • Claim term = “density below about 0.91 g/cm3” • Accused films either 0.912 g/cm3 or 0.908 g/cm3 • DC: means densities between 0.905 and 0.914, based on the

convention that numbers in this range would be rounded to 0.91. • FC: means "below about 0.910 g/cm3” because once during

prosecution, Viskase used 0.91 with a zero in the third decimal place to distinguish a prior art copolymer “having a density range of "0.910 to 0.940 g/cm3.“

• Interpreted such use as indicating Viskase treated 0.91 as if it were 0.910

• “clear that the prosecution argument to distinguish Shibata was presented as necessary to draw a line in this crowded field of technology, and that Viskase drew the line between ‘very low density’ and other polyethylenes at 0.910 g/cm3”

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• Biotec Biologische Naturverpackungen GmbH & Co. KG v. Biocorp, Inc., 249 F.3d 1341 (Fed. Cir. 2001)

• Claim term = "substantially water free" • No definition or numerical range in specification • FC: meant less than 5% water based on arguments to overcome

a prior art reference which described a water content ranging from 5% to 30%

Yet Another

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“Clear And Unmistakable” Disclaimer “When the patentee makes clear and unmistakable

prosecution arguments limiting the meaning of a claim term in order to overcome a rejection, the courts limit the relevant claim term to exclude the disclaimed matter…. An ambiguous disclaimer, however, does not advance the patent’s notice function or justify public reliance, and the court will not use it to limit a claim term’s ordinary meaning. . . .

There is no 'clear and unmistakable' disclaimer if a prosecution argument is subject to more than one reasonable interpretation, one of which is consistent with a proffered meaning of the disputed term. . . .” – SanDisk Corp. v. Memorex Products, Inc., 415 F.3d 1278 (Fed.

Cir. 2005), cert. denied, (U.S. Dec. 2005)

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Construing Silence? Salazar v. Procter & Gamble Co., 414 F.3d 1342

(Fed. Cir. 2005) – Invention: toothbrush – DC: granted SJ of noninfringement based on

construction of claim term “elastic” Construed as “any material other than nylon, capable of

returning to an initial state or form after deformation.” Found that the remarks in the Examiner’s Statement of

Reasons for Allowance “amended the claim specifically to exclude nylon from the definition of ‘elastic.’”

– FC: Vacate and remand DC erred in using patent examiner’s Reasons of Allowance

to exclude nylon from the scope of the claim term “elastic”

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Salazar (con’t) 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.”

– 37 C.F.R. § 1.109 is now 37 C.F.R. § 1.104(e).

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Salazar (con’t) Applicant’s silence regarding statements made by the

examiner during prosecution, without more, cannot amount to a “clear and unmistakable disavowal” of claim scope.

District court relied upon same remarks to find PHE, finding that the examiner’s remarks amended claim term, “elastic”

FC: “This court refuses to create a rule or presumption that the applicant in this case disavowed claim scope by silence.” – “An examiner’s statement cannot amend a claim.” – “Examiner’s unilateral remarks alone do not affect the scope of the

claim, let alone show a surrender of claimed subject matter that cannot be recaptured under the doctrine of equivalents.”

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Related Applications Prosecution history of related application may be

considered as intrinsic evidence Inapposite to allow a continuing application the benefit of

the parent’s priority filing date, but then consider the continuing application’s prosecution history separately from that of the parent for claim construction purposes

– Sextant Avionique S.A. v. Analog Devices, Inc., 172 F.3d 817 (Fed. Cir. 1999): FC used unrelated but commonly owned application to construe claims

– Abbott Labs. v. Dey, L.P., 287 F.3d 1097 (Fed. Cir. 2002): FC cited Sextant dissent and held that it is not permissible to use prosecution of unrelated prior art application to construe claims of subsequent patent

– Microsoft Corp. v. Multi-Tech Systems, Inc., 357 F.3d 1340 (Fed. Cir.), reh’g denied, 2004 U.S. App. LEXIS 8417-18 (2004): FC used a statement in the prosecution of one patent to construe a claim term in three patents sharing a common specification

– Hakim v. Cannon Avent Gp., PLC., 479 F.3d 1313 (Fed. Cir. 2007): Narrowing arguments made in a parent case that were not expressly rescinded in prosecution of continuation application, operated to narrow the claim “Although a disclaimer made during prosecution can be rescinded, permitting recapture of the disclaimed scope, the prosecution history must be sufficiently clear to inform the examiner that the previous disclaimer, and the prior art . . . may need to be re-visited.”

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Extrinsic Evidence Extrinsic evidence can only assist court in

understanding Only turn to extrinsic evidence if intrinsic

evidence is silent or ambiguous

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But Beware.... MarcTec, LLC v. Johnson & Johnson, __ F.3d __ (Fed.

Cir. 2012)(O’Malley, J.), prior appeal, 394 Fed. Appx. 685 (Fed. Cir. 2010)

The court affirmed a nearly $ 4 million award of attorney fees and expenses where the 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”

The appellate tribunal affirmed the trial court conclusion that the case is 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

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MarcTec (cont’d) “With respect to claim construction, [the patentee] argues that it was

not improper for it to urge the district court to adopt plain meaning constructions of the disputed claim terms. While we agree that claim construction necessarily involves consideration of the plain meaning of disputed terms, here… [the patentee] ignored language in the specification and statements made during prosecution that directly contradicted the plain meaning arguments it advanced. In fact, …counsel for [the patentee] misrepresented the law on claim construction and encouraged the court to ignore the specification unless it found an insoluble ‘ambiguity’ in the claim language.”…While standing alone, such mischaracterizations of Phillips would not warrant an award of attorney fees, when coupled with [the patentee]’s decision to advance frivolous and unsupported allegations of infringement premised on mischaracterizations of the claim constructions adopted by the trial court, this misdirection lends support to the district court’s finding of litigation misconduct.”

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Lauren L. Stevens, Ph.D. [email protected] 650.856.3700

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Claim Construction

Suggestions For Avoiding Having Limitations Read Into Your Claims

Colin G. Sandercock*

* 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 Bancorp, 653 F.3d 1314, 1320 (Fed, Cir. 2011) (limitation from specification 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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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, prevents, removes, always, never, pure, uniform, etc.?

The specification states that “it has now been found that there is a temperature range in which a catalyst based on pure chromium (without the addition of another metal oxide) can produce, in the presence of oxygen,” difluoromethane. . . The specification further explains that “it is necessary to have a catalyst containing solely chromium.”

Atofina v. Great Lakes Chemical Corporation, 441 F.3d 991, 997 (Fed Cir 2006) (“chromium catalyst” construed as catalyst where the only catalytically active material is chromium without the addition of metal oxides or non-inert additives)

Does the specification describe claim features in absolute terms?

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Step 2 (if prosecution has begun)

If there is prosecution history, then assess the risk that it contains statements that may narrow the meaning of key claim terms or otherwise constitute a disclaimer of claim scope

Statements made to distinguish prior art or overcome a rejection can narrow claim scope, even if –

other arguments also were made to overcome the rejection;

the examiner did not agree with the statement; and/or

the examiner did not rely on the statement

See, e.g., American Piledriving Equipt., Inc. v. Geoquip, Inc., 637 F.3d 1324, 1336 (Fed. Cir. 2011) (claim term “integral” narrowed to mean “formed or cast of one piece” because of prosecution history statement)

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Step 3 (if the application is not yet filed)

Remove, as appropriate – references to the invention and objects of the invention, etc. language of inclusion/exclusion, criticality and absolute terms

Define key terms in the specification When a patentee explicitly defines a claim term in the patent

specification, the patentee's definition controls. Martek Biosciences Corp. v. Nutrinova, Inc., 579 F.3d 1363, 1380 (Fed. Cir. 2009) (Court 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.) (“[C]laim differentiation takes on relevance in the context of a claim construction that would render additional, or different, language in another independent claim superfluous....”)

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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 through the Patent Office cannot be permitted.”).

Laryngeal Mask Co. v. Ambu A/S, 618 F.3d 1367, 1373 (Fed. Cir. 2010)

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Step 5

Clarify the record – concurrent with your amendment, provide remarks that correct and/or clarify any prosecution history that may work against your intended claim construction

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Step 1 – assess your risk that the specification provides a reason to narrow or alter the ordinary and customary meaning of your claim terms

Step 2 – where prosecution has already begun, assess your risk that it contains statements that may narrow the meaning of key claim terms or otherwise constitute a disclaimer of claim scope

Step 3 – if the application is not yet filed, where appropriate amend the specification to (i) remove language that may provide a basis for narrowing your claims, and (ii) add embodiments, examples and/or definitions that support the desired construction of key terms

Step 4 – address the claims by adding independent and/or dependent claims that clarify the claim scope, and/or by deleting unnecessary limitations from your claims

Step 5 – clarify the prosecution history to try to neutralize prior statements that may be potentially problematic

Summary

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Colin G. Sandercock Perkins Coie LLP

700 Thirteenth Street N.W. Washington, D.C. 20005-2003 PHONE: 202.434.1630 FAX: 202.654.9673 E-MAIL: [email protected]

Questions or Comments

Patent Profanity Tom Irving

© Finnegan, 2012

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DISCLAIMER

These materials are public information and have been prepared solely for educational and entertainment purposes to contribute to the understanding of U.S. intellectual property law. These materials reflect only the personal views of the authors and are not individualized legal advice and do not reflect the views of FINNEGAN. It is understood that each case is fact-specific, and that the appropriate solution in any case will vary. Therefore, these materials may or may not be relevant to any particular situation. Thus, FINNEGAN and the authors cannot be bound either philosophically or as representatives of their various present and future clients to the comments expressed in these materials. The presentation of these materials does not establish any form of attorney-client relationship with FINNEGAN or the authors. While every attempt was made to insure that these materials are accurate, errors or omissions may be contained therein, for which any liability is disclaimed.

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Not All Patents Are Created Equal

v.

Clear, unambiguous claims that will be construed broadly and will be enforceable; prosecuted in non-limiting way with a strategically written specification.

Narrow and/or ambiguous claim language that will be easily designed around and will be worthless. Or poorly drafted specification; or inartfully prosecuted patent.

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“critical” “essential” “key” “peculiar” “special” “necessarily” “important”

OR ELSE

Be Careful About “Selling” the Invention Too Enthusiastically: PATENT PROFANITY!!

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Surprising Unexpected (?) All (?) Only (?) Each (?) “The invention is…” or “This

invention…”

WORDS THAT MAKE OTHER WORDS PROFANITY

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U.S. specification and prosecution history will be used to construe U.S. patent claims De novo appellate review in the U.S. of claim

construction

WHY TO AVOID “PATENT PROFANITY”

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U.S. Court of Appeals for the Federal Circuit (“FC”) affirmed holding of noninfringement in Inpro II Licensing, S.A.R.L. v. T-Mobile USA, Inc., 450 F.3d 1350 (Fed. Cir. 2006) – Invention: a credit-card sized PDA that can be "docked" by plugging

it into a corresponding bay on the host computer. – U.S. District Court (DC): Construed claim term, “host interface” to

mean “a direct parallel bus interface. No infringement because such a host interface is absent from the accused

devices. – Inpro: district court erroneously limited term to the embodiment in

the specification; term includes any interface for providing communication with a host.

“Very Important”

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Inpro II (con’t) – FC: Narrow claim scope because patentee used the term

“very important” in the specification. “A very important feature … in an aspect of the present

invention is a direct parallel bus interface [.] The only host interface described in the specification is a

direct parallel bus interface. Specification emphasizes the importance of a parallel

connection in solving the problems of the previously used serial connection.

“Very Important” and “Only”

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FC affirmed no infringement in Bayer AG v. Elan Pharmaceuticals Research Corp., 212 F.3d 1241 (Fed. Cir. 2000), because Bayer “unmistakably surrendered coverage to SSAs above 4 m2/g” through its use of the words “special” and “peculiar.

– Claim 1. A solid pharmaceutical composition comprising as the active

ingredient an effective amount of nifedipine crystals with a specific surface area of 1.0 to 4 m2/g, in admixture with a solid diluent, to result in a sustained release of nifedipine.

Elan's ANDA covers a once-daily formulation of nifedipine - an extended

release tablet dosage form containing 30 mg of nifedipine.

“Special” “Peculiar”

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Bayer (con’t) – DC: Summary judgment of no literal infringement and no infringement

under the doctrine of equivalents. Elan's proposed product will have an SSA greater than 5 m2/g.

– FC: Affirmed. “After amending its claims to cover an SSA range of 1.0 to 4 m2/g,

Bayer asserted that it claimed ‘a special form of nifedipine, namely, having a specific surface area of 1.0 to 4 m2/g,’ …[with] a superior, inventive range.” In brief to BPAI, “nifedipine crystals with an SSA range of 1.0 to 4

m2/g provided the ‘peculiar’ effect of maintaining a high blood level of nifedipine for a long period of time.”

“Special” “Peculiar”

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FC affirmed no infringement in Atofina v. Great Lakes Chemical Corp., 441 F.3d 991 (Fed. Cir. 2006), because of statements in the specification that “it is necessary to have a catalyst containing solely chromium.”

– Great Lakes’ chromium catalyst contained a non-chromium, non-

nickel substance.

Atofina: statements regarding “metal oxides” were intended to distinguish only nickel-chromium catalysts.

“That the applicants only needed to surrender nickel-chromium catalysts to avoid a prior art reference does not mean that its disclaimer was limited to that subject matter.”

“Necessary”

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“Necessary” Federal Circuit commented in that patentee may have avoided

anticipation rejection if they DID use patent profanity!

But that leaves a narrow, easily-infringed claim!

ClearValue, Inc. v. Pearl River Polymers, Inc., -- F.3d – (Fed. Cir. 2012)

– Claim limitation “raw alkalinity less than or equal to 50 ppm” anticipated by

disclosure of “150 ppm or less”.

– Patentee argued Atofina should apply (claims reciting “between 330–450°C” not anticipated by disclosure of prior art range of 100–500°C.

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“Necessary”

ClearValue (con’t)

– FC said reliance on Atofina “misplaced” because Atofina described narrower range as “critical”, distinguishing the prior art. Patentee in ClearValue did not explain any critical difference from using less than 50 ppm.

– BUT, that kind of patent profanity may cost you! – – And always have to watch out for Rule 56 anytime factual allegations

are made.

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FC affirmed no infringement in Pharmacia & Upjohn Co. v. Mylan Pharmaceuticals, Inc., 170 F.3d 1373 (Fed. Cir. 1999), because during prosecution, Upjohn emphasized the “criticality” of using spray-dried lactose.

– 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 Pharmaceuticals, Inc., 239 F.3d 1297 (Fed. Cir. 2001).

DC: Biovail amended its claims during prosecution to “exclude a sugar core not in admixture with the diltiazem ... in response to a prior art rejection.” Therefore, “Biovail is estopped from asserting that the inert sugar core of the Andrx formulation is a ‘wetting agent’ within the scope of the claims ….”

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“Necessarily”

Biovail (con’t) – FC: Affirmed.

Remarks accompanying amendment: a bead

produced by the [claimed] extrusion-spheronization process “is necessarily a homogeneous bead composition.”

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Narrow claim construction in Andersen Corp. v. Fiber Composites LLC, 474 F.3d 1361 (Fed. Cir. 2007) based on profanity in the specification and during prosecution.

– For Group II patents, “specification indicates that the

structural members are defined by reference to the process by which they are made”

– A double profanity: “procedure requires two important steps. A first blending

step and a second pelletizing step.”

“Requires” “Important”

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Andersen (con’t)

– Group I claims: During prosecution, applicants repeatedly distinguished the invention from the prior art by referring to the pellet form or the pelletization process as an essential part of the invention.

– “Important” also played a narrowing role. “The manufacture of the pellet is important in obtaining

the final structural properties of the composite member”

“Essential” “Important”

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“Invention Is…” C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858 (Fed. Cir.

2004)

– Claimed plug for hernias, but no claim language as to surface of plug.

– Specification “consistently described as having pleats”

– Summary of Invention, Abstract

– DC: No infringement. Claim construed to require pleated plug.

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“Invention Is…” C.R. Bard (con’t)

– FC: Affirmed -> no infringement by plugs without pleats.

“because the patent globally defined the plug as having a

pleated surface, the term "pleated" need not be repeated each time a term describing some other aspect of the plug is used.” Statements of general applicability clearly define the

claimed plug as "having" or "includ[ing] a pleated surface."

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“Invention Is…”

C.R. Bard (con’t)

– FC: Explicitly relied on statements in the “Summary of the Invention” and the Abstract for its claim construction:

“Statements that describe the invention as a whole, rather than

statements that describe only preferred embodiments, are more likely to support a limiting definition of a claim term. [citation omitted] …Accordingly, other things being equal, certain sections of the specification [such as the Summary and Abstract] are more likely to contain statements that support a limiting definition of a claim term than other sections…. In this case, the plug claimed by the '432 patent is defined globally as requiring a pleated surface, which limits claim 20.”

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“The present invention”/ “this invention”

Edwards Life Sciences v. Cook, Inc., 582 F.3d 1322 (Fed. Cir. 2009) – “specification frequently describes an ‘intraluminal graft’ as

‘the present invention’ or ‘this invention,’ indicating an intent to limit the invention to intraluminal devices.”

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What About “Preferable”? Claim includes embodiments beyond “preferable”

– Lampi Corp. v American Power Products, Inc., 228 F.3d 1365, 56 U.S.P.Q. 1444 (Fed. Cir. 2000)

Only “preferred” embodiments within scope of claim.

– Wang Laboratories, Inc. v. American Online, Inc., 197 F.3d 1377

(Fed. Cir. 1999) – Scimed Life Systems, Inc. v. Advanced Cardiovascular Systems, Inc.,

242 F.3d 1337 (Fed. Cir. 2001) – Oak Technology, Inc. v. ITC, 248 F.3d 1316 (Fed. Cir. 2001)

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Minimize the use of words of characterization – Chief, Majority – Critical, Essential, Necessary – Solely, Only, Is – Main – Significant – Principal – Important – Fundamental – Vital

TIPS TO AVOID PATENT PROFANITY

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TIPS Obtaining Patents Be careful of statements that express limitations on scope of

invention. Define claim terms broadly. “is” vs. “may be” The “invention is” vs. “the invention may include” Attacking Competitors’ Patents Look very carefully at the precise wording of the patent. Mistakes

will help you narrow their patents.

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Thank You!

If you have any questions, please contact:

Thomas L. Irving Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Tel: 202.408.4082 [email protected]

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