Claims II

1. Claims II Patent Law - Prof Merges 4.7.08

2. Main Topics • Equivalents and Means plus Function claims • Procedural aspects of claim interpretation

3. Intro to Equivalents • Wright v. Paulhan, book p. 821 • Wright brothers • Judge Learned Hand

4. Judge Learned Hand

7. Claim 7 In a flying machine, the combination with an aeroplane . . . and means for simultaneously moving the lateral portions thereof into different angular relations to the normal plane of the body of the aeroplane and to each other, so as to present to the atmosphere different angles of incidence, of a vertical ruder, and means whereby said rudder is caused to present to the wind that side thereof nearest the side of the aeroplane having the smaller angle of incidence and offering the least resistance to the atmosphere, substantially as described.

8. P. 823 [I]f the connection between the tiller ropes and the warping device in a constant proportion, be an essential element in the combination patented, the planes which the defendant uses are in no sense infringements …

9. Where the change is only an obvious modification of the means specified, and a modification which retains each element of the combination contributing the same effect as before, the claim is not too broad which includes the modification. -824

10. Additional points • “Pioneer patent” doctrine – p. 824 • “Means plus function” language: “means for simultaneously moving the lateral portions thereof …” • Aelerons covered?

11. Contrast with Phillips Courts should construe patents by “first look[ing] into the art to find what the real merit of the alleged discovery or invention is.” Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45, 63 (1923).  VERSUS exclusive focus in NOTICE

12. Markman • What claim language is at issue?

13. Markman • What claim language is at issue? • “Maintain an inventory total” • “Detect and localize spurious additions to inventory”

14. United States Patent RE33,054 Markham September 12, 1989 Inventory control and reporting system for drycleaning stores Abstract An inventory control and reporting system especially for retail drycleaners includes a data input keyboard having key blocks corresponding to information for identification and calculation of processing costs of laundry articles to be cleaned, a data processor adapted to calculate pricing information and to generate reports based upon such data input, the processor being connected to a printer and the processor and printer producing sequential multiple part bar code records and tags for attachment to the laundry articles in sequential transactions, and also as hard copies for the customer and for the establishment.

17. Markman • Jury Verdict? • Trial court holding? • Issue on appeal?

18. Seventh Amendment • “Historical test” – what is it and how does it work?

19. Seventh Amendment • “Historical test” – what is it and how does it work? • How is it applied here – what did the Court find? • Cause of action vs. issue in a case

20. Markman Highlights • Historical approach to 7th Amendment Cases • “mongrel practice” – proceed by analogy • p. 888 • Deep roots of patent proceedings in 17th-19th centuries • Repeated insistence that “legal construction is

21. Justice Benjamin Curtis

22. Today’s Digression: Dred Scott

23. “functional considerations” - 894 • Institutional competency • The Federal Circuit revolution comes home to roost! • Uniformity is important • Statutory objectives

24. Document as a whole emphasis • P. 895 • Lessons for Phillips v AWH? • Dictionaries vs. specification

25. Holding “Interpretation . . . Is an issue for the judge . . .” p. 896

26. What Hath Markman Wrought? • Crucial importance of the “Markman Hearing” • Claim interpretation 1st; frames entire case • Judges are reversed at least as often as juries on claim construction!

27. Christian Chu • Reversal rate in patent cases on all issues hovered around 47.3%, and dropped to 36.3% if summary affirmances were included. • The Federal Circuit changed at least one claim interpretation in 44% of its writing opinions • Modified claim interpretation resulted in reversals of 68% of those opinions.

28. Christian Chu, Empirical Analysis of Federal Circuit's Claim Construction Trends, 16 Berkeley Tech. L.J. 1075 (2001)

29. Kimberley Moore • District court judges improperly construed patent claim terms in 33% of the cases appealed to the Federal Circuit. • This rate was higher than the reversal rate on other patent issues.

30. Kimberly A. Moore, Are District Court Judges Equipped to Resolve Patent Cases?, 15 Harv. J. Law & Tec 1 (Fall, 2001). Kimberly A. Moore, Markman Eight Years Later: Is Claim Construction More Predictable?, 9 LEWIS & CLARK L. REV. __, __, __ fig.1 (2005) (reversal rate on upward trend)

31. Evolution of Claim Construction Markman v. Westview Instruments, 52 F.3d 967 (Fed Cir 1995) (en banc), aff’d 517 U.S. 370 (1996) interpreted scope and meaning of claims as a question of fact during deliberations Claim construction = matter of law • “Markman” hearing • focus on intrinsic evidence • Vitronics (Fed Cir 1996) (generally “improper to rely on extrinsic evidence”) • de novo appellate review • notwithstanding trial court’s proximity to experts pre-1995 1995

32. Reversal Rate 40% 30% 20% 10% Evolution of Claim Construction Markman v. Westview Instruments, 52 F.3d 967 (Fed Cir 1995) (en banc), aff’d 517 U.S. 370 (1996) interpreted scope and meaning of claims as a question of fact during deliberations Claim construction = matter of law • “Markman” hearing • focus on intrinsic evidence • Vitronics (Fed Cir 1996) (generally “improper to rely on extrinsic evidence”) • de novo appellate review • notwithstanding trial court’s proximity to experts pre-1995 1995

33. Evolution of Claim Construction Markman v. Westview Instruments, 52 F.3d 967 (Fed Cir 1995) (en banc), aff’d 517 U.S. 370 (1996) interpreted scope and meaning of claims as a question of fact during deliberations Claim construction = matter of law Texas Digital 308 F.3d 1193 (Fed. Cir. 2002) • “Markman” hearing • focus on intrinsic evidence • Vitronics (Fed Cir 1996) (generally “improper to rely on extrinsic evidence”) • de novo appellate review • notwithstanding trial court’s proximity to experts pre-1995 1995 2000-02 2005

34. Return to Phillips “[I]s it appropriate for this court to accord any deference to any aspect of trial court claim construction rulings? If so, on what aspects, in what circumstances, and to what extent?” – p. 845

35. Mayer and Newman, dissenting [T]here can be no workable standards by which this court will interpret claims so long as we are blind to the factual component of the task. – p. 846

36. Amgen Inc. v. Hoechst Marion Roussel, Inc., 469 F.3d 1039 (Fed. Cir. 2006). Fourjudges seemed inclined to overrule Cybor. See id. at 1040-1046 (separatedissents by Michel, C.J., Newman, Rader and Moore, JJ.). Three others expressed willingness “[i]n an appropriate case . . . to reconsider limited aspect of the Cybor decision.” Id. at 1045 (Gajarsa, Linn and Dyk, JJ.).

37. SRAM Corp. v. AD-II Engineering Inc., 465 F.3d 1351, 80 USPQ2d 1363 (Fed. Cir. 2006): Federal Circuit gave no deference to either district court claim interpretation or PTO reexamination proceeding.

40. Peak or “Bump” “Valley” Top of the “T” End of gear shifter wire