WHAT EVERY TRIAL LAWYER SHOULD KNOW     ABOUT CLAIM CONSTRUCTION                  Presented by: Jerry R. Selinger Californ...
Overview Of Claim Construction   Starts with a goal – not done in a vacuum       Avoid infringement/create invalidity de...
Caveat on “outcome determinative”   Several studies on reversal rates at the Federal    Circuit because of claim construc...
Value Added by Trial Counsel   The Federal Circuit and the Supreme Court    have given us general guidelines       But t...
K-2 Corp., 191 F.3d 1356 (Fed. Cir. 1999)   In claim construction, “[c]ourts do not rewrite    claims; instead, we give e...
Phillips , 415 F.3d 1303 (Fed. Cir. 2005) (en banc)   In determining the meaning of a claim term, a    court may look to:...
Phillips, 415 F.3d at 1312-1313 Claim terms are “generally given their ordinary  and customary meaning.” Ordinary meanin...
Phillips, 415 F.3d at 1315 “[T]he specification is always highly relevant to  the claim construction analysis.” “Usually...
Phillips, 415 F.3d at 1316   A patentee may define his own terms,       give a claim term a different meaning than the t...
Thorner v. Sony (Fed. Cir. Feb. 1, 2012)   To act as a lexicographer, the patentee must    clearly do so by setting forth...
Thorner, cont’d   The Federal Circuit disagreed       disavowal and lexicography require a clear and        explicit sta...
Narrowing Claims Both claim amendments and statements to  distinguish a claim over prior art can narrow  claim scope. Spe...
Deference to the District Court?   Claim construction is a question of law for the    court.       Cybor Corp. v. FAS Te...
Deference (cont’d.) The absence of deference may be one reason  for the Federal Circuit‟s reversal rate on claim  constru...
THE ROLE OF THE SPECIFICATION   Ongoing debate over line-drawing       Within the Federal Circuit                       ...
The Role of the Specification   It is improper to import a limitation from the    specification into the claims.       S...
Retractable Tech., 653 F. 3d 1296 The district court construed the term “body” as  not limited to a one-piece structure. ...
Retractable Tech., 653 F. 3d 1296   “The specifications indicate that the claimed    „body‟ refers to a one-piece body.” ...
Retractable Tech., 653 F. 3d 1296   “In reviewing the intrinsic evidence to construe    the claims, we strive to capture ...
Retractable Tech., 653 F. 3d 1296 “In this case, while the claims leave open the  possibility that the recited „body‟ may...
Retractable Tech., 653 F. 3d 1296   Chief Judge Rader dissented:       “The ordinary and customary meaning of „body‟ doe...
Atlantic Research 659 F.3d 1345 (Fed. Cir. 2011) Patentee sought to limit claim construction       Argued that certain ...
ZapMedia Services, Inc. v. Apple, Inc   No. 2011-1546, 2012 U.S. App. LEXIS 8273    (Fed. Cir. Apr. 25, 2012) (non-preced...
ZapMedia Services System and method for distributing media assets  to user devices and managing rights of the  media asse...
ZapMedia Services   During prosecution, ZapMedia distinguished    over a patent in which it argued that media    assets “...
ZapMedia Services   The district court construed “all asserted claims    [to] require that access to the media assets be ...
THE EVOLUTION OF § 112, ¶ 6   Following In Re Donaldson Co., 16 F.3d 1189    (Fed. Cir. 1994)                            ...
The Language of § 112, ¶ 6   “An element in a claim for a combination may be    expressed as a means or step for performi...
Application of § 112, ¶ 6 When a claim uses the term "means" in a  limitation, the inventor is presumed to have used  the...
In re Aoyama, 656 F.3d 1293    The dispute was about what structure was    disclosed in the specification and linked to t...
In re Aoyama, 656 F.3d 1293                              31
In re Aoyama, 656 F.3d 1293   “The Board erred by identifying structure that was not    clearly linked or associated by t...
In re Aoyama, 656 F.3d 1293 “Figure 8 fails to describe, even at a high level,  how a computer could be programmed to  pr...
In re Katz, 639 F.3d 1303 (Fed. Cir. 2011)   Began by referring to Aristocrat, 521 F.3d at    1330-31, where disclosed st...
In re Katz, 639 F.3d 1303   One limitation in dispute was       “a processing means . . . for receiving customer        ...
In re Katz, 639 F.3d 1303   Other claims recited a system with an “interface    means for providing automated voice messa...
In re Katz, 639 F.3d 1303 Other claims recited “processing,” “receiving,”  and “storing.” Those functions can be achieve...
Ergo Licensing, LLC Ergo Licensing, LLC v. Carefusion 303, Inc., 673  F.3d 1361 (Fed. Cir. March 26, 2012). “programmabl...
Ergo Licensing, LLC “The function of „controlling the adjusting means‟  requires more than merely plugging in a general- ...
Ergo Licensing, LLC “Even described „in prose,‟ an algorithm is still “a  step-by-step procedure for accomplishing a  giv...
Micro Chem., 194 F.3d 1250 (Fed. Cir. 1999) If the word “means” is not used, a claim element  is presumed NOT to invoke §...
MIT , 462 F.3d 1344 (Fed. Cir. 2006)   Claim term was “colorant selection mechanism for    receiving said modified appear...
HTC Corp v. IPCom   HTC Corp v. IPCom GMBH & Co., KG, 667 F.3d    1270 (Fed. Cir. 2012)       The limitation “arrangemen...
Defining the Bounds of § 112, ¶ 6   Microprocessor Enhancement Corp v. Texas    Instruments, Inc., 520 F.3d 1367 (Fed. Ci...
Defining the Bounds of § 112, ¶ 6   Typhoon Touch Techs., Inc. v. Dell, Inc. 659 F.    3d 1376 (Fed. Cir. 2011)       “a...
Typhoon Touch, 659 F. 3d 1376   Typhoon argued that it suffices if the memory is    capable of being configured to store ...
THANK YOU   QUESTIONS?                             47
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State Bar Advanced CLE Presentation August 2012 (selinger)

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State Bar Advanced CLE Presentation August 2012 (selinger)

  1. 1. WHAT EVERY TRIAL LAWYER SHOULD KNOW ABOUT CLAIM CONSTRUCTION Presented by: Jerry R. Selinger California  Texas  New Jersey  North Carolina
  2. 2. Overview Of Claim Construction Starts with a goal – not done in a vacuum  Avoid infringement/create invalidity defense  Avoid prior art but read on accused device The Markman ruling often is outcome determinative (generally speaking)  Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996) 2
  3. 3. Caveat on “outcome determinative” Several studies on reversal rates at the Federal Circuit because of claim construction errors  Judge (then Professor) Kimberly Moore  Professor David Schwartz But few cases get all the way through appeal Claim construction remains a settlement driver 3
  4. 4. Value Added by Trial Counsel The Federal Circuit and the Supreme Court have given us general guidelines  But the devil is often in the details Trial counsel who is not taking the laboring oar still adds value to the Markman process  Ensuring the focus is on issues that matter  Ensuring your position is communicated effectively to an often non-technical decision maker  Providing a sanity check on constructions 4
  5. 5. K-2 Corp., 191 F.3d 1356 (Fed. Cir. 1999) In claim construction, “[c]ourts do not rewrite claims; instead, we give effect to the terms chosen by the patentee.” 5
  6. 6. Phillips , 415 F.3d 1303 (Fed. Cir. 2005) (en banc) In determining the meaning of a claim term, a court may look to:  the language of the claims,  the specification,  prosecution history, and  extrinsic evidence. 6
  7. 7. Phillips, 415 F.3d at 1312-1313 Claim terms are “generally given their ordinary and customary meaning.” Ordinary meaning is “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention” and “in the context of the entire patent.” 7
  8. 8. Phillips, 415 F.3d at 1315 “[T]he specification is always highly relevant to the claim construction analysis.” “Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.” 8
  9. 9. Phillips, 415 F.3d at 1316 A patentee may define his own terms,  give a claim term a different meaning than the term would otherwise possess,  disclaim or disavow claim scope. Otherwise, terms in a patent will have the meaning those terms would have to one of ordinary skill in the art. 9
  10. 10. Thorner v. Sony (Fed. Cir. Feb. 1, 2012) To act as a lexicographer, the patentee must clearly do so by setting forth a definition of the term other than its plain and ordinary meaning.  The claim term was “attached to said pad.”  Sony argued specification used “attached” to refer to outside connection and “embedded” for internal connection.  District court ruled that “specification redefines „attached‟ by implication” 10
  11. 11. Thorner, cont’d The Federal Circuit disagreed  disavowal and lexicography require a clear and explicit statement by the patentee  Stated that merely disclosing an embodiment, or criticizing a prior structure is not disavowal  Sought to distinguish cases as being “pre-Phillips” 11
  12. 12. Narrowing Claims Both claim amendments and statements to distinguish a claim over prior art can narrow claim scope. Spectrum Int’l, Inc. v. Sterilite Corp., 164 F.3d 1372, 1378 (Fed. Cir. 1998) 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 (Fed. Cir. 1995)  Clear and unambiguous disclaimer 12
  13. 13. Deference to the District Court? Claim construction is a question of law for the court.  Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998) (en banc) The Federal Circuit gives district court claim constructions no deference.  Even if the district court heard conflicting expert testimony 13
  14. 14. Deference (cont’d.) The absence of deference may be one reason for the Federal Circuit‟s reversal rate on claim construction The de novo standard of review for claim construction might change one day So - continue to make your record 14
  15. 15. THE ROLE OF THE SPECIFICATION Ongoing debate over line-drawing  Within the Federal Circuit 15
  16. 16. The Role of the Specification It is improper to import a limitation from the specification into the claims.  See Phillips, 415 F.3d at 1323. But there “is a fine line between construing the claims in light of the specification and improperly importing a limitation from the specification into the claims.”  Retractable Tech., Inc. v. Becton, Dickinson & Co., 653 F. 3d 1296, 1323-24 (Fed. Cir. 2011)(emphasis added) 16
  17. 17. Retractable Tech., 653 F. 3d 1296 The district court construed the term “body” as not limited to a one-piece structure. Id. at 1302. The patent contained an independent claim that recites “a body,” with one dependent claim that limited “the body” to a “one-piece body.” Id. at 1305. But “none of the claims expressly recite a body that contains multiple pieces.” Id. 17
  18. 18. Retractable Tech., 653 F. 3d 1296 “The specifications indicate that the claimed „body‟ refers to a one-piece body.”  “In distinguishing prior art syringes, [it] state[s] that the prior art had failed to recognize a retractable syringe that „can be molded as a one piece outer body.‟”  “[E]ach figure that depicts a syringe body shows a one-piece body. In contrast, the specifications do not disclose a body that consists of multiple pieces or indicate that the body is anything other than a one- piece body.”  Id. at 1305 18
  19. 19. Retractable Tech., 653 F. 3d 1296 “In reviewing the intrinsic evidence to construe the claims, we strive to capture the scope of the actual invention, rather than strictly limit the scope of claims to disclosed embodiments or allow the claim language to become divorced from what the specification conveys is the invention.” Id. at 1305 (emphasis added). 19
  20. 20. Retractable Tech., 653 F. 3d 1296 “In this case, while the claims leave open the possibility that the recited „body‟ may encompass a syringe body of more than one piece, the specifications tells us otherwise.” Id. Consequently, a construction of “body” that limits the term to a one-piece body “is required to tether the claims to what the specifications indicate the inventor actually invented.” Id. 20
  21. 21. Retractable Tech., 653 F. 3d 1296 Chief Judge Rader dissented:  “The ordinary and customary meaning of „body‟ does not inherently contain a one-piece structural limitation.”  The “claims themselves, not the written description portion of the specification, define the patented invention.” 21
  22. 22. Atlantic Research 659 F.3d 1345 (Fed. Cir. 2011) Patentee sought to limit claim construction  Argued that certain claims should not be construed more broadly than the specification. The district court construed those claims as written and held them invalid for failure to meet the written description requirement of § 112, ¶ 1. Federal Circuit affirmed  It refused to ignore substantive differences between claims or to “eviscerate” the plain meaning of the claim language. 22
  23. 23. ZapMedia Services, Inc. v. Apple, Inc No. 2011-1546, 2012 U.S. App. LEXIS 8273 (Fed. Cir. Apr. 25, 2012) (non-precedential) 23
  24. 24. ZapMedia Services System and method for distributing media assets to user devices and managing rights of the media assets “In the preferred embodiment, a user obtains an account on a server, is issued a password and a virtual private media asset database is created.”  Slip Op. at 2. “That account keeps track of the licensed media assets (e.g., songs and videos) and the various media player devices registered by the user.”  Id. at 3. 24
  25. 25. ZapMedia Services During prosecution, ZapMedia distinguished over a patent in which it argued that media assets “can be copied and used by ANY player device, not a subset of player devices that are associated with a user account.”  Slip. Op. at 4 (emphasis in original) Claim language was “authorized” media player devices with “access” to media assets. Id. 25
  26. 26. ZapMedia Services The district court construed “all asserted claims [to] require that access to the media assets be limited only to those media players specified in the user account.”  Slip. Op. at 4 (emphasis in original). “In other words, if a system allowed access to media assets through the user account by an unauthorized device, it would not infringe.” Id. This negative limitation was affirmed, “in light of the claim language, written description, and the prosecution history.” Id. at 8. 26
  27. 27. THE EVOLUTION OF § 112, ¶ 6 Following In Re Donaldson Co., 16 F.3d 1189 (Fed. Cir. 1994) 27
  28. 28. The Language of § 112, ¶ 6 “An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material or acts described in the specification and equivalents thereof.”  35 U.S.C. § 112, ¶ 6 28
  29. 29. Application of § 112, ¶ 6 When a claim uses the term "means" in a limitation, the inventor is presumed to have used the term to invoke 35 U.S.C. § 112, ¶ 6. A court must first identify the function of the limitation and then identify the corresponding structure for that function disclosed in the specification and linked to the function.  B. Braun Med., Inc. v. Abbott Labs, 124 F.3d 1419, 1429 (Fed. Cir. 1997); In re Aoyama, 656 F.3d 1293, 1297 (Fed. Cir. 2011) 29
  30. 30. In re Aoyama, 656 F.3d 1293 The dispute was about what structure was disclosed in the specification and linked to the function of “generating transfer data.”  The Board of Appeals found the function was linked to “the flowchart of Figure 8.”  However, because Figure 8 disclosed insufficient structure, the Board expanded its construction of “transfer data” to include “shipping data.” 30
  31. 31. In re Aoyama, 656 F.3d 1293 31
  32. 32. In re Aoyama, 656 F.3d 1293 “The Board erred by identifying structure that was not clearly linked or associated by the specification or prosecution history with the function actually recited in the claim, i.e., „generating transfer data.‟” Where the disclosed structure is a computer programmed to implement an algorithm, the patent must disclose enough of an algorithm to provide the necessary structure under § 112, ¶ 6. “The patentee may express this algorithm in any understandable manner, including as a flowchart, so long as sufficient structure is disclosed.” 32
  33. 33. In re Aoyama, 656 F.3d 1293 “Figure 8 fails to describe, even at a high level, how a computer could be programmed to produce the structure that provides the results described . . . .” Because there is insufficient disclosure of structure under § 112, ¶ 6, these claims were held to be unpatentable as indefinite under § 112, ¶ 2. 33
  34. 34. In re Katz, 639 F.3d 1303 (Fed. Cir. 2011) Began by referring to Aristocrat, 521 F.3d at 1330-31, where disclosed structure of “a standard micro-processor based gaming machine” with “appropriate programming” was held to be indefinite.  An algorithm needed to be disclosed to avoid pure functional claiming.  Pure functional claiming means all structure that could perform the recited function. 34
  35. 35. In re Katz, 639 F.3d 1303 One limitation in dispute was  “a processing means . . . for receiving customer number data entered by a caller and for storing the customer number data . . . and based on a condition coupling an incoming call to the operator terminal . . . .” The patent did not disclose an algorithm corresponding to the highlighted language.  One claiming a processor programmed to perform a specialized function must disclose the internal structure of that processor in the form of an algorithm or the claim is invalid under § 112, ¶ 2. 35
  36. 36. In re Katz, 639 F.3d 1303 Other claims recited a system with an “interface means for providing automated voice messages . . . to certain of said individual callers, wherein said certain of said individual callers digital enter data.”  IPXL, 430 F.3d 1377, held claims indefinite because they claimed both an apparatus and a method of use. The Court rejected Katz‟s argument that IPXL did not apply because the “wherein” language defines functional capability, not a method step. 36
  37. 37. In re Katz, 639 F.3d 1303 Other claims recited “processing,” “receiving,” and “storing.” Those functions can be achieved by any general purpose computer without special programming. So the only structure that needed to be disclosed was the general purpose processor that performs those functions. 37
  38. 38. Ergo Licensing, LLC Ergo Licensing, LLC v. Carefusion 303, Inc., 673 F.3d 1361 (Fed. Cir. March 26, 2012). “programmable control means …for controlling said adjusting means” Memory or general purpose computer? “The specification discloses that the control device [itself generic] has memory, but memory is not structure capable of performing the function of „controlling the adjusting means.‟” Id. at 1364. 38
  39. 39. Ergo Licensing, LLC “The function of „controlling the adjusting means‟ requires more than merely plugging in a general- purpose computer. Rather, some special programming would be required in order to control the adjusting means.” Id. at 1365. “It is only in the rare circumstances where any general purpose computer without any special programming can perform the function that an algorithm need not be disclosed.” Id. 39
  40. 40. Ergo Licensing, LLC “Even described „in prose,‟ an algorithm is still “a step-by-step procedure for accomplishing a given result.” Id. at 1365. The specification merely provides functional language and does not contain any step-by-step process for controlling the adjusting means.” Id. The “district court correctly determined that the „control means‟ terms are indefinite for failure to disclose corresponding structure.” Id. 40
  41. 41. Micro Chem., 194 F.3d 1250 (Fed. Cir. 1999) If the word “means” is not used, a claim element is presumed NOT to invoke § 112, ¶ 6. But the presumption is overcome when a limitation relies on functional language without reciting sufficient structure to perform the function. 41
  42. 42. MIT , 462 F.3d 1344 (Fed. Cir. 2006) Claim term was “colorant selection mechanism for receiving said modified appearance signals and for selecting corresponding reproduction signals representing values of said reproducing colorants to produce in said medium a colorimetrically-matched reproduction.” Federal Circuit agreed the term needed to be construed under § 112, ¶ 6. 42
  43. 43. HTC Corp v. IPCom HTC Corp v. IPCom GMBH & Co., KG, 667 F.3d 1270 (Fed. Cir. 2012)  The limitation “arrangement for reactivating” was construed under § 112, ¶ 6, even though it did not use the word “means.”  The specification needed to disclose adequate hardware structure and software structure.  But those are arguments the lawyers had to make to the district court to preserve the arguments for appeal. 43
  44. 44. Defining the Bounds of § 112, ¶ 6 Microprocessor Enhancement Corp v. Texas Instruments, Inc., 520 F.3d 1367 (Fed. Cir. 2008)  Apparatus claims may use functional language to limit the claims “without using the means-plus-function format.”  Where the claim uses functional language but recites insufficient structure, § 112, ¶ 6 may apply despite the lack of “means for” language. 44
  45. 45. Defining the Bounds of § 112, ¶ 6 Typhoon Touch Techs., Inc. v. Dell, Inc. 659 F. 3d 1376 (Fed. Cir. 2011)  “a memory for storing at least one data collection application configured to determine contents and formats of said inquiries displayed on said screen.”  The district court construed this to be a “memory that must perform the recited function.”  Typhoon complained that the district court improperly included a “use‟ limitation in an apparatus claim. 45
  46. 46. Typhoon Touch, 659 F. 3d 1376 Typhoon argued that it suffices if the memory is capable of being configured to store data collection applications, even if the memory is not so configured. The district court held that the memory is actually programmed or configured to store the data collection application. “No error of law or fact has been shown” in requiring that the device be structured to store at least one data collection application. 46
  47. 47. THANK YOU QUESTIONS? 47

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