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 (antigone.peyton@cloudigylaw.com).

1. KIPO/KIPA
U.S. IP Practice Program
Direct Infringement
Antigone G. Peyton
September 21, 2010

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. Direct Infringement Acts
§ Make
§ Use
§ Offer to sell
§ Sell
§ Import
3

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. 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. 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. 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. 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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9. Markman Hearing
(Claim Construction)
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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. Markman Hearing
§ Oral Argument
– May be decided on the paper filings without hearing
– Markman hearing may be scheduled
11

12. Markman Hearing
Complaint Trial
Answer Markman Final Appeal
Hearing Judgment
Discovery
Pre-Litigation
Post-Judgment
Investigation
Proceedings
Pre-Trial Motions
12

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
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14. Advantages of Markman Determinations
§ Promote uniformity?
§ Encourage early settlement
§ Reduce litigation costs
§ Narrow issues
14

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
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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. If a Patentee Receives a Favorable Markman Ruling . . .
GO FOR THE KNOCKOUT!
(Summary Judgment of Infringement)
17

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
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19. Rules of Claim Interpretation
19

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. 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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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. “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
23

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. Comparison of Prior Art with Patent
and Accused Product
Sensor
Housing Housing
Housing
Speaker Sensor
Sensor
PATENT PRIOR ART ACCUSED
PRODUCT
25

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. 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. 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)
28

29. Extrinsic Evidence
§ Dictionaries, treatises
§ Expert testimony
§ Less significant in determining the meaning of the
claims
Phillips v. AWH Corp. (Fed. Cir. 2005) (en banc)
29

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. 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. 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. 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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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
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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)
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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
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37. Literal Infringement
37

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.
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39. Infringement Under
Doctrine of Equivalents
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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. Literal Infringement Versus Infringement Under DOE
41
41

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)
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43. Limiting Equivalents: All-Elements Rule
§ Equivalent to individual claim element, not the
invention as a whole
Example: DOE
apples only to the
sensor element
Warner-Jenkinson v. Hilton Davis Chemical Co. (U.S. 1997)
43

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. 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
45

46. 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
46

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. 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. 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. 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. 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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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.”
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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.
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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
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55. Prosecution History Estoppel Chart
Did the amendment
1 narrow the literal NO NO PHE
scope of the claim?
Rebuttal evidence
restricted to
YES
prosecution history
For a substantial reason
2 relating to patentability? NO NO PHE
YES
NO REASON SHOWN
Scope of subject Presumption
3 matter surrendered? that reason is related to patentability
55

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. 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. 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