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DIMOCK STRATTON LLP Intellectual Property Law

Patent Specifications, Claim Construction and Patent Infringement Osgoode Hall Law School – March 10, 2005. By Ronald E. Dimock and Adrian Kaplan Dimock Stratton LLP, Toronto, ON. DIMOCK STRATTON LLP Intellectual Property Law. Topics. First Principles Claims Claim Construction

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DIMOCK STRATTON LLP Intellectual Property Law

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  1. Patent Specifications, Claim Construction and Patent Infringement Osgoode Hall Law School – March 10, 2005 By Ronald E. Dimock and Adrian Kaplan Dimock Stratton LLP, Toronto, ON DIMOCK STRATTON LLPIntellectual Property Law

  2. Topics • First Principles • Claims • Claim Construction • Free World Trust v. Électro Santé Inc. • Whirlpool Corp. v. Camco Inc. • Drafting Patent Specifications • Infringement Test • Case Examples

  3. First Principles • Bargain theory: • 20-year monopoly • full and complete disclosure • The function of the specification: 1) “to enable the construction and use of the devices…after the expiry of the patent” 2) “to ascertain with some measure of exactness the boundaries of the exclusive privilege” Pioneer Hi-Bred Ltd. v. Commissioner of Patents [1989] 1 S.C.R. 1623

  4. First Principles • Components of the specification: - description - drawings - claims

  5. Patent Act 27. (3) The specification of an invention must (a) … describe the invention and its operation or use… (b) set out clearly the various steps … such full, clear, concise and exact terms as to enable any person … to make, construct, compound or use it; (c) … best mode in … (d) in the case of a process … distinguish the invention from other inventions.

  6. Patent Act • 27. (4) The specification must end with a claim or claims defining distinctly and in explicit terms the subject-matter of the invention for which an exclusive privilege or property is claimed • Patent Rules: Section 80

  7. Claims • Define the invention and the patent monopoly • Directed towards person skilled in the art • Errors in patent drafting may affect: • scope • validity • enforceability of patent

  8. Claims • Must be fully supported by the description (s.84 Patent Rules) • Balance: • Draft broadly but do not claim prior art

  9. Form of Claims • Broad vs. Narrow claims • Dependent vs. Independent claims

  10. Form of Claims • A claim is usually a single sentence containing three parts: 1) Preamble 2) Transitional phrase 3) Body • Example: An agitator assembly for a clothes washing machine comprising: a first agitator element, a second agitator element…. [Claim1, 734 Patent]

  11. Types of Claims • Product claims • A medicinal drug for treating arthritis which comprises the following chemical structure… • Product-by-Process claims • The product made by heating A with B • Means claims • A concrete saw comprising a means for supporting the surface of the concrete…

  12. Types of Claims • Method claims • The method of conditioning fabrics which comprises commingling pieces of damp fabric by tumbling said pieces under heat in a laundry dryer together with a substrate carrying a transferable conditioning agent…. • Markush claims • A solvent selected from the group consisting of alcohol, ether and acetone… • Jepson claims • Recites prior art in preamble and uses the transitional phrase “the improvement comprising…”

  13. Claim Construction • A question of law • To construe the claims means to determine the meaning & scope of the claims. • Steps in claim construction analysis: 1st: give meaning to the words + phrases in the claims

  14. Claim Construction 2nd: isolate the words + phrases that identify the elements of the invention 3rd: determine whether elements are essential or non-essential • For infringement: • All essential elements must be present • Non-essential elements may be omitted or substituted.

  15. Free World Trust v. Électro Santé Inc.[2000] 2 S.C.R. 1024 • Figure 1 of the patents

  16. Free World Trust v. Électro Santé Inc.[2000] 2 S.C.R. 1024 • Does a patent monopoly protect “the substance” or “the spirit” of an invention, or what is “literally described in the written claims”? • Inventor puts fences around the fields of his monopoly to warn the public against trespassing on his property

  17. Free World Trust v. Électro Santé Inc.[2000] 2 S.C.R. 1024 Two schools of thought: 1) Central Claims Drafting Principle: - German & Japanese patent systems - “pith or substance” or the “spirit” of the invention 2) Peripheral Claiming Principle: - claims define the legal boundary

  18. Free World Trust v. Électro Santé Inc.[2000] 2 S.C.R. 1024 • Supreme Court of Canada rejected the “spirit of the invention” approach: - accepted fairness & predictability - a patent with uncertain scope becomes “a public nuisance”

  19. Whirlpool Corp. v. Camco Inc.[2000] 2 S.C.R. 1067

  20. Whirlpool Corp. v. Camco Inc. • The Plaintiff asserted 2 patents relating to agitators for washing machines: • 803 Patent: an agitator with “outwardly extending substantially vertically oriented vanes” • 734 Patent: an agitator with vanes specified to be flexible.

  21. Whirlpool Corp. v. Camco Inc. • Issue: did the claims of the first patent (803) also cover flexible vanes? • Claim construction is antecedent to validity and infringement analysis

  22. Whirlpool Corp. v. Camco Inc. • Purposive construction: - assistance of skilled reader - “essential” elements of invention • “A mind willing to understand” - the “purpose and intent of the author”

  23. Principles of Claim Construction • Adherence to claims: • Public notice function • Sets out the scope of the monopoly • Informed and Purposive way • Separate essential from the non-essential elements: • Common knowledge of worker skilled in the art

  24. Principles of Claim Construction • Date the patent was published • Sympathetic to the accomplishment of the inventor’s purpose: • Expressed or implied in claims • Self-inflicted wound • No resort to extrinsic evidence • Undermines public notice function of claims • Inventor’s intention that element is essential irrespective of its practical effect.

  25. Principles of Claim Construction • Non-essential element if: • Clearly not intended to be essential • Obvious to skilled reader that it could be substituted: • Substantially the same function • In substantially the same way • to obtain the same result • If patentee fails to discharge this onus, claim is considered essential.

  26. Drafting Strategy • Claims • Draft Claims as broadly as possible. • Avoid unnecessary limitations. • Self inflicted wound. • Use of broader terms is now permissible in view of Free World Trust and Whirlpool. • Examples: “about”, “substantially” “generally”.

  27. Drafting Strategy • Description • Describe the invention in the context of how it is a technical advancement. • Describe the invention and its functional advantages in broad terms. • Be clear when an element is non-essential. • Describe alternate embodiments. • Describe all terms in claims expansively.

  28. Infringement Test • There is infringement if all essential elements are used • There is no infringement if an essential element is different or omitted • There may be infringement if non-essential elements are substituted or omitted.

  29. Case Examples

  30. Globe Union Inc. v. Varta Batteries Inc. (1981), 57 C.P.R. (2d) 132 (F.C.T.D.); varied (1984) 53 N.R. 6, 3 C.I.P.R. 1, 80 C.P.R. (2d) 1 (F.C.A.) • 709,030 – BATTERY INTERCELL CONNECTING METHODS AND STRUCTURES • Claim 7: The method of making a sealed electrical connection through an opening in the wall of a storage battery comprising the steps of: providing conductors on opposite sides of the opening in the wall, there being projection material extending through the wall opening between such conductors; passing an electric current through said projection material to soften at least a portion of such material into a deformable mass; and squeezing said conductors together during the application of the electrical current to force the softened metal of the projection material into sealing engagement with the wall of the opening.

  31. Amfac Foods Inc. v. Irving Pulp & Paper Ltd. (1984), 2 C.I.P.R. 115, 80 C.P.R. (2d) 59 (F.C.T.D.) aff’d (1986) 72 N.R. 290, 9 C.I.P.R. 265, 12 C.P.R. (3d) 193 (F.C.A.) • 773,884 – VEGETABLE SLICING APPARATUS • Claim 16: In a system for the cutting of vegetable products, into sections, a hydraulic food pump, a product cutter, said pump being arranged to continuously and sequentially feed said products through said product cutter at relatively high speed, said cutter comprising a plurality of cutter blades arranged in spaced relation with their cutting edges lying in planes normal to the longitudinal axis of said cutters, said cutter blades being arranged in two sets, the cutting edges in the one set being at right angles to the cutting edges in the other set, each of said sets being disposed symmetrically with respect to said axis, the outer faces of said blades being inclined outwardly with respect to said axis in the direction of product feed, and the inner faces of said blades being substantially parallel to said axis.  

  32. Control Data Canada Ltd. v. Senstar Corp. (1989), 25 F.T.R. 102, 23 C.I.P.R. 175, 23 C.P.R. (3d) 449 (F.C.T.D) • 1,014,245 – PERIMETER SURVEILLANCE SYSTEM USING LEAKY COAXIAL CABLES • Claim 1: A detection system for locating targets which reflect or absorb electro-magnetic energy comprising, first and second leaky coaxial cables extending along a prescribed path and spaced from another a distance greater than an order of magnitude larger than their outside diameter, a transmitter connected to one of said cables and a receiver connected to the other to receive a signal derived from the transmitter, whereby a target alters the coupling between the cables and means processing the received signal to determine the location of the target.

  33. Almecon Industries Ltd. v. Nutron Manufacturing Ltd. (1996), 108 F.T.R. 161, (1996) 65 C.P.R. (3d) 417 (F.C.T.D.), aff’d (1997) 209 N.R. 387, 72 C.P.R. (3d) 397 (F.C.A.); leave to appeal denied [1997] S.C.C.A. No. 374 (Q.L.) • 1,220,134 – TOPPING AND TAMPING PLUG • Claim 1: A tamping and topping plug for use in a seismic bore hole, and comprising: a body member having a forward and a rearward end and terminating at its forward end with a somewhat flattened end part; a plurality of elongated members extending outwardly and rearwardly from at least one end of the said body member, said members so arranged as to give the plug axial stability when inserted into a bore hole.

  34. Almecon Industries Ltd. v. Anchortek Ltd., 2001 FCT 1404, 215 F.T.R. 100, 17 C.P.R. (4th) 74 (F.C.T.D.), aff’d 2003 FCA 168, 303 N.R. 76 • 1,220,134 – TOPPING AND TAMPING PLUG • Claim 1: A tamping and topping plug for use in a seismic bore hole, and comprising: a body member having a forward and a rearward end and terminating at its forward end with a somewhat flattened end part; a plurality of elongated members extending outwardly and rearwardly from at least one end of the said body member, said members so arranged as to give the plug axial stability when inserted into a bore hole.

  35. For a copy of this presentation, please e-mail rdimock@dimock.com or akaplan@dimock.com DIMOCK STRATTON LLP Intellectual Property Law

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