Claims III

Patent Law – Prof Merges

11.1.2011

Agenda

• More on claim construction (literal infringement)– Policy issues– Disavowal

• Doctrine of Equivalents• Prosecution History Estoppel• Post-Festo developments

On Demand

• Post-Phillips claim construction

–Role of spec

–“Disavowal”

On Demand Mach. Corp. v. Ingram Indus., Inc., 442 F.3d 1331, 1343 (Fed. Cir. 2006)

8. A method of high speed manufacture of a single copy of a book comprising the steps of:

[2] storing the text of a plurality of books in a computer,

[3] storing sales information relating to said plurality of books in a computer,

[4] providing means for a customer to visually review said sales information,

[5] commanding a computer to print the text of a selected one of said books in response to a customer's selection,

[6] retrieving the text of said selected one of said books from a computer,

[7] printing the text of said selected one of said books on paper pages,

[8] binding said paper pages together to form said selected one of said books,

[9] storing graphical information corresponding to the cover of each of said books,

[10] commanding a computer to reproduce said graphical information on a book cover, and

[11] binding said paper pages together with said cover therearound.

442 F.3d 1331, 1338 – p. 5

The district court then defined “sales information” as “data stored in a computer which is involved in the promoting and selling of a book,” and that the term is not limited to promotional information, but includes descriptive information as well, such as price.

The defendants argue that the district court construed and instructed the jury on “sales information” too broadly. They argue that the patent specification and prosecution history require that “sales information” always includes information that is promotional in nature, and that the term is not met by the provision of only price and identifying information such as title or ISBN.

“It is therefore an object of the invention to provide a book manufacturing system which is capable of storing data corresponding to the text and color graphical cover of tens of thousands of different books, as well as promotional sales text and color graphics for aiding the consumer in choosing a book for purchase, and facilitate the high speed manufacture of a single copy ….” -- Ross patent spec.

We agree with the defendants that the prosecution history requires this claim construction, for the inclusion of promotional information was a material distinction from the prior art. Mr. Ross stressed that in his invention a customer can browse among books based on information concerning the substantive content of the book.

The defendants argue that ODMC disavowed this interpretation in order to obtain the patent, and represented to the patent examiner that the inclusion of promotional material is what distinguishes this invention from the prior art.

“Customer”

…

[5] commanding a computer to print the text of

a selected one of said books in response to a customer's selection,

The Ross specification repeatedly reinforces its usage of the term “customer” as the retail consumer. See col. 7, lines 24-25 (“All customer actions are conducted within customer console 103”); col. 15, lines 59-60 (“the customer seats himself or herself in front of computer screen 157” as depicted in Fig. 2); col. 2, lines 8-12

(“if the consumer wishes to purchase a book, he may either pay for the book through a store clerk ... or the consumer may enter his credit card into the system”). The specification distinguishes “general purpose machines ... not specifically designed to be consumer operated for the on demand, automatic manufacturing of a single book at the point of sale.”

The district court's definition of “customer” cannot eliminate these constraints in order to embrace the remote large-scale production of books for publishers and retailers.

442 F.3d 1331, 1340 – p. 7ODMC argues that the patentee did not disavow

the standard dictionary meaning of “customer,” and that the Ross invention is not limited to any specific kind of customer. However, when the scope of the invention is clearly stated in the specification, and is described as the advantage and distinction of the invention, it is not necessary to disavow explicitly a different scope.

Disavowal

Astrazeneca AB v. Mut. Pharm. Co., 384 F.3d 1333, 1339-40 (Fed. Cir. 2004):

Where the general summary or description of the invention describes a feature of the invention (here, micelles formed by the solubilizer) and criticizes other products (here, other solubilizers, including co-solvents) that lack that

same feature, this operates as a clear disavowal of these other products.

From “disavowal” to prosecution history estoppel

•Warner-Jenkinson and (most importantly) Festo in the Supreme Court

The Doctrine of Equivalents

• Distinguish from “literal infringement”

• Distinguish from section 112 par. 6 “means plus function” equivalents: common law doctrine

Warner-Jenkinson arguments in Sup Ct

• What did petitioner W-J argue?

– DOE Dead

– DOE should be narrowed

1952 Act and the DOE

• Peripheral claiming

• Reissue

• PTO role

• Sec. 112 Par. 6 – “means plus function” claims

– Specific provision implies repeal of general DOE?

Proper Scope of DOE

• “Overall equivalent” vs. “element-by-element” analysis

• Judge Nies dissent key

What does this mean – element-by-element?

•What exactly is an element?

What does this mean – element-by-element?

“subjecting an aqueous solution to ultrafiltration [1] through a membrane having a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx. 200-400 p.s.i.g. [3] at a pH from approximately 6.0 to 9.0”

Prosecution History Estoppel

• Limit on DOE

• What is the “prosecution history”?

United States Patent 4,189,380 Booth , et al. February 19, 1980 Salt addition in ultrafiltration purification of solutions of polymeric colorants

The ultrafiltration purification of aqueous solutions of polymeric colorants, wherein low molecular weight impurities are removed in an ultrafiltrate leaving a purified polymeric colorant-bearing retentate, is carried out with improved efficiency when, during at least two diavolumes of ultrafiltration, the salt content of the retentate is maintained above about 1% by weight.

• Inventors: Booth; Robin G. (Palo Alto, CA); Cooper; Anthony R. (Los Altos, CA) Assignee: Dynapol (Palo Alto, CA) Filed: November 18, 1976

Original Claim – Rebhahn Application

In a process for the purification of a dye . . . the improvement which comprises: subjecting an aqueous solution to ultrafiltration through a membrane having a nominal pore diameter of 5-15 Angstroms under a hydrostatic pressure of approx. 200-400 p.s.i.g. to thereby cause separation of said impurities from said dye . . .

Amendment

Added this phrase (claim limitation) to the claim:

. . . at a pH from approximately 6.0 to 9.0 . . .

Booth reference: pH Above 9.0

In a process for the purification of a dye . . . the improvement which comprises: subjecting an aqueous solution to ultrafiltration through a membrane having [1] a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx. 200-400 p.s.i.g. [3] at a pH from approximately 6.0 to 9.0, to thereby cause separation of said impurities from said dye . . .

Original Claim Scope

Original Claim Scope

Narrowed Scope, after amend-ment

Accused product: ultra-purifica-tion at 9.5 pH

No Infringement under DOE

X

Accused Product: pH of 5.0 – can Hilton-Davis assert infringement under DOE?

??

• United States Patent 4,354,125 Stoll October 12, 1982 Magnetically coupled arrangement for a driving and a driven member

The invention is concerned with a magnetically coupled arrangement for a driving and a driven member, which arrangement is operable by a pressure medium and is used in a conveying system. A slidable piston (16) within a tube (10) has an arrangement of annular magnets (20) provided at each end with sealing and sliding members (24, 26). A driven assembly (18) slidable on the outer surface of the tube (10) has an arrangement of annular magnets (32) corresponding to the magnets (20) and provided at each end with a sliding ring (44). The members (24, 26, 44) prevent ingress of foreign bodies to the magnet locations, and consequently enable the spacing between the magnets and the tube (10) to be very small. A good magnetic coupling is achieved resulting in effective transmission of power. Several pistons (16) abutting one another can be used for conveying heavy loads.

Inventors: Stoll; Kurt (Lenzhalde 72, D-7300 Esslingen, DE) Appl. No.: 153999Filed: May 28, 1980

Prosecution History

• Amendments

• What limitations did they add?

• Why were they made?

Fed Cir opinion

• Two aspects

– Prosecution history estoppel (PHE) applies to all amendments, whatever the basis

– PHE represents a complete bar to all equivalents of amended claim

Federal Circuit opinion

• 11 – 1 on amendment rationale issue

• 8-4 on “complete bar” approach

2nd Point: The 3-Part Test

• Supreme Court rejects “complete bar”

Original Claim Scope

Original Claim Scope

Narrowed Scope, after amend-ment

Original Claim Scope

Narrowed Scope, after amend-ment

X

Embodi-ment “X”: Can DOE cover?

Narrowed Scope, after amend-ment

X

Embodi-ment “X”: Can DOE cover?

“Estoppel” idea

• Who is estopped from what?

• Why?

• Like other legal instances of estoppel concept?

The 3-Part Festo Test

• [1] Unforeseeable equivalents

• [2] Amendment bears “tangential relation” to equivalent

• [3] “Some other reason” -- expectations

Is the DOE dying?

• Allison, John R. and Lemley, Mark A., "The (Unnoticed) Demise of the Doctrine of Equivalents" . Stanford Law Review, Vol. 59, 2007

• The doctrine of equivalents was already near death by the late 1990s. That became even more true after 2000. Reason: Markman

"On the Decline of the Doctrine of Equivalents"

Cardozo Law Review, Vol. 31, No. 4, 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE, Loyola Law School

Los Angeles

True?

• Very narrow range of equivalents in some cases

• ““9. A vector comprising an isolated DNA molecule comprising a sequence selected from the group consisting of ORFs 1-13”, amended to read:

Narrow equivalents

“A vector comprising an isolated DNA molecule of porcine circovirus type II comprising . . .”

Held: ORFs between PCV I and PCV II have been surrendered; nothing in this rage can fall within claim

BUT:

Something left of DOE?

Merial is not, however, estopped from arguing that a pathogenic porcine viral sequence with over 99% nucleotide homology with one of the five representative strains is equivalent to that strain.

Intervet Inc. v. Merial Ltd., 617 F.3d 1282, 1292 (Fed Cir 2010)