KIPO/KIPA Presentation: Direct Infringement (2010)


Published on

A basic overview of the U.S. patent law standards for direct infringement of a patent and a case study I’ve used to walk through those standards. This presentation was prepared for the Korean Intellectual Property Office and Korean Invention Promotion Association 2010 training program in Washington, DC.

For additional information on this presentation, please contact Antigone Peyton (

Published in: Technology, Business
  • Be the first to comment

No Downloads
Total views
On SlideShare
From Embeds
Number of Embeds
Embeds 0
No embeds

No notes for slide

KIPO/KIPA Presentation: Direct Infringement (2010)

  1. 1. KIPO/KIPAU.S. IP Practice ProgramDirect Infringement Antigone G. Peyton September 21, 2010
  2. 2. 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 2
  3. 3. Direct Infringement Acts§  Make§  Use§  Offer to sell§  Sell§  Import 3
  4. 4. Direct Infringement–Overview §  PTO interpretation of claims (patentability) §  Court claim interpretation (claim construction– infringement) –  Markman hearings –  Rules of claim interpretation –  Literal infringement –  Doctrine of equivalents 4
  5. 5. 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 5
  6. 6. Court Infringement Analysis: Two–Step Test §  Step 1: Claim Construction –  Plain meaning of the words of the claim –  The specification –  The prosecution history –  Claim interpretation is a legal question 6
  7. 7. Court Infringement Analysis: Two–Step Test §  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 7
  8. 8. 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 8
  9. 9. Markman Hearing(Claim Construction) 9
  10. 10. 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? 10
  11. 11. Markman Hearing §  Oral Argument – May be decided on the paper filings without hearing –  Markman hearing may be scheduled 11
  12. 12. Markman Hearing Complaint Trial Answer Markman Final Appeal Hearing Judgment DiscoveryPre-Litigation Post-JudgmentInvestigation Proceedings Pre-Trial Motions 12
  13. 13. 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 13
  14. 14. Advantages of Markman Determinations§  Promote uniformity?§  Encourage early settlement§  Reduce litigation costs§  Narrow issues 14
  15. 15. 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 15
  16. 16. 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 16
  17. 17. If a Patentee Receives a Favorable Markman Ruling . . . GO FOR THE KNOCKOUT! (Summary Judgment of Infringement) 17
  18. 18. 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 18
  19. 19. Rules of Claim Interpretation 19
  20. 20. 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) 20
  21. 21. Priority of Intrinsic Evidence §  Federal Circuit: look first at the intrinsic evidence –  Patent claims –  Specification –  Prosecution historyPhillips v. AWH Corp. (Fed. Cir. 2005) (en banc) 21
  22. 22. 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) 22
  23. 23. “Heavy Presumption” OrdinaryMeaning 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 23
  24. 24. 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 24
  25. 25. Comparison of Prior Art with Patentand Accused Product Sensor Housing Housing Housing Speaker Sensor Sensor PATENT PRIOR ART ACCUSED PRODUCT 25
  26. 26. Intrinsic Evidence: Specification §  Specification states: –  The external sensor permits the sensor to be replaced without replacing the entire speaker Sensor –  Locating the speaker externally also enables quick replacement should the Housing sensor fail §  Diagram with sensor external to housing 26
  27. 27. Intrinsic Evidence: Prosecution History Housing§  Applicant states in a Reply to Office Action: Sensor “Applicants have amended claim 1 to recite an ‘external’ sensor. The external Sensor sensor enables replacement of the sensor without replacing the speaker.” Housing 27
  28. 28. Generally, Extrinsic Evidence Should Onlybe 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) 28
  29. 29. Extrinsic Evidence §  Dictionaries, treatises §  Expert testimony §  Less significant in determining the meaning of the claimsPhillips v. AWH Corp. (Fed. Cir. 2005) (en banc) 29
  30. 30. Dictionaries Can Provide Ordinary Meaning §  Dictionaries may be acceptable for determining the ordinary meaning of a claim term §  Not considered “prohibited” extrinsic evidence 30
  31. 31. Example of Extrinsic Evidence§  Patentee’s expert declaration (hired expert Housing with 25 years experience in the industry): “Having reviewed the entire record and in view Sensor of my years of experience in this field, it is my expert opinion that a person of ordinary skill in or the art would understand the term “external” to Sensor mean anywhere outside the speaker, Housing regardless of whether inside or outside the housing.” 31
  32. 32. 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 Sensor ordinary skill in the art would understand Housing the word “external” in claim 1 to require the sensor to be on the outside of the housing.” 32
  33. 33. 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 33
  34. 34. 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 34
  35. 35. 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) 35
  36. 36. 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 36
  37. 37. Literal Infringement 37
  38. 38. Literal Infringement§  Each part of claimed invention found in accused device without changes Claim 1: A dynamic sound Sensor adjustment system, comprising: a housing; Housing a speaker located in the housing; and an external sound sensor for monitoring the speaker. 38
  39. 39. Infringement UnderDoctrine of Equivalents 39
  40. 40. 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 40
  41. 41. Literal Infringement Versus Infringement Under DOE 41 41
  42. 42. 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) 42
  43. 43. Limiting Equivalents: All-Elements Rule §  Equivalent to individual claim element, not the invention as a whole Example: DOE apples only to the sensor elementWarner-Jenkinson v. Hilton Davis Chemical Co. (U.S. 1997) 43
  44. 44. 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? Sensor Housing X Housing Speaker Sensor PATENT PRIOR ART 44
  45. 45. Limiting Equivalents: Inherent Narrowness of theClaim Language §  Some claim language has no scope of equivalence –  Claim recites “wherein said sensor is external to the housing . . .” X 45
  46. 46. Limiting Equivalents: Equivalent Disclaimed inSpecification§  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 46
  47. 47. 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 47
  48. 48. 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 48
  49. 49. 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 49
  50. 50. 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 50
  51. 51. Supreme Court’s Festo Test for Prosecution HistoryEstoppel§  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 51
  52. 52. 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.” 52
  53. 53. 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. 53
  54. 54. 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 54
  55. 55. Prosecution History Estoppel Chart Did the amendment1 narrow the literal NO NO PHE scope of the claim? Rebuttal evidence restricted to YES prosecution history For a substantial reason2 relating to patentability? NO NO PHE YES NO REASON SHOWN Scope of subject Presumption3 matter surrendered? that reason is related to patentability 55
  56. 56. Prosecution History Estoppel Chart Festo presumption that Scope of subject patentee surrendered 3 matter surrendered? all coverage between original claim limitation and amended claim limitation Show no REBUTTED surrender of NOT REBUTTED particular equivalent PHE bars patentee No PHE and equivalent from relying on of element covered DOE for by claim element 56
  57. 57. 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 57
  58. 58. 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 58