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OVERVIEW of an INFRINGEMENT ANALYSIS for U.S. UTILITY PATENT by John C. Garvey the Following Is a Summary of the Basic Issues Wh

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OVERVIEW of an INFRINGEMENT ANALYSIS for U.S. UTILITY PATENT by John C. Garvey the Following Is a Summary of the Basic Issues Wh OVERVIEW OF AN INFRINGEMENT ANALYSIS FOR U.S. UTILITY PATENT By John C. Garvey The following is a summary of the basic issues which the U. S. Supreme Court and the Court of Appeals for the Federal Circuit (“Federal Circuit”) indicate should be considered by anyone performing an infringement analysis. The issues are discussed in the order presented on the attached Infringement Analysis Diagram. This is not meant to indicate that the issues must be considered in this order, or that all issues are pertinent to every infringement analysis. For example, decisions written by the courts tend to focus on only those issues which are relevant to the facts of the case being decided. However, anyone performing an infringement analysis should at least consider whether each of these issues is pertinent to the facts of the situation being analyzed. CLAIM CONSTRUCTION The first step in any infringement analysis is to interpret or construe the claim language. The focus in construing a claim term is on what one of ordinary skill in the art at the time of the invention, would have understood the term to mean. Markman v. Westview Instruments, Inc., 52 F.3d 967, 34 USPQ2d 1321, 1335 (Fed. Cir. 1995) (en banc), affirmed 116 SCt 1384, 38 USPQ 2d 1461 (1996). Three sources are used to construe the meaning of claims: the claims, the specification, and the prosecution history. Markman, 34 USPQ2d at 1329. While extrinsic evidence such as expert testimony may be used to assist a court in construing the claims, such extrinsic evidence cannot be used to vary or contradict the terms of the claims as explained in the patent or prosecution history. See Markman, 34 USPQ2d at 1331. In particular, expert testimony on the meaning of a claim term to one of ordinary skill at the time of the invention cannot be relied on to construe a claim term when it appears from the patent and the prosecution history that the claim term was used differently by the applicant. Southw all Technology, Inc. v. Cardinal IG Co., 54 F.3d 1570, 34 USPQ2d 1673, 1678 (Fed. Cir. 1995). Also, the claims should not be interpreted in light of the potentially infringing device. SRI Int'l v. Matsushita Electric Corp. of America, 775 F.2d 1107, 227 USPQ 577 (Fed. Cir. 1985). The Federal Circuit has previously taken the position that “[d]ictionaries, encyclopedias and treatises, publicly available at the time the patent is issued, are objective resources that serve as reliable sources of information on the established meanings that would have been attributed to the terms of the claims by those of skill in the art.” Texas Digital Systems, Inc. v. Telegenix, Inc., 64 U.S.P.Q.2d 1812, 1818 (Fed. Cir. 2002). Once the meaning of a claim term is ascertained based, for example, on a dictionary, the intrinsic record (i.e., the specification, claims and prosecution history) “must always be consulted to identify which of the different possible dictionary meanings of the claim terms in issue is most consistent with the use of the words by the inventor.” Id. at 1819. That is, the intrinsic record may show that only one of a number of different definitions is applicable to a claim term. Alternatively, it is possible that the intrinsic record will be inconsistent with one or all of the dictionary definitions. Thus, “the presumption in favor of a dictionary definition will be overcome where the patentee, acting as his or her own lexicographer, has clearly set forth an explicit definition of the term different from its ordinary meaning.” Id. The presumption is also rebutted ”if the inventor has disavowed or disclaimed scope of coverage, by using words or expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.” Id. In Phillips v. AWH Corp., the Federal Circuit clarified the use of extrinsic and intrinsic evidence in claim construction. 415 F.3d 1303, 75 USPQ2d 1321 (Fed. Cir. 2005) (en banc). Prior to Phillips, some court cases suggested a greater emphasis on dictionary definitions of claim terms and gave less significance to the specification and prosecution history. If more than one of the dictionary definitions was consistent with the intrinsic record, the claim terms could encompass all the consistent meanings. Phillips, 415 F.3d at 1319, 75 USPQ2d at 1332. In Phillips, the court recognized the “systematic over-breadth” of this approach, and stated that the court should instead focus “at the outset on how the patentee used the claim term in the claims, specification, and prosecution history, rather than starting with a broad definition and whittling it down.” Phillips, 415 F.3d at 1321, 75 USPQ2d at 1333. Thus, intrinsic evidence is the key to claim interpretation. EXAMPLE: If a claim recites "a golf ball having a cover with large dimples," there might be some dispute as to the true meaning of the term "large." The specification and prosecution history would be considered in order to determine the meaning of the term "large." The remaining terms would be given their ordinary meaning. An important step in claim interpretation is identifying whether the claim has any "means- plus- function" limitations. A "means-plus-function" limitation is defined as "an element in a claim for a combination ... expressed as a means or step for performing a specified function without the recital of structure, material or acts in support thereof ..." 35 U.S.C.§112, ¶6. W hen the claim under consideration includes "means-plus- function" language, 35 U.S.C. §112, ¶6 requires that this language "be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof." Therefore, properly interpreted means-plus-function language is limited because it covers only the structure, material, or acts described in the specification and their equivalents. Valmont Industries, Inc. v. Reinke Manufacturing Co., Inc., 983 F.2d 1039, 25 USPQ2d 1451 (Fed. Cir. 1993). "In determining whether to apply the statutory procedures of section 112, ¶6, the use of the word 'means' triggers a presumption that the inventor used this term advisedly to invoke the statutory mandates for means-plus-function clauses." York Products, Inc. v. Central Tractor Farm & Family Center, 99 F3d 1568, 40 USPQ2d 1619, 1623 (Fed. Cir. 1996). However, to "invoke this statute; the alleged means-plus-function claim element must not recite a definite structure which performs the described function." Cole v. Kimberly-Clark Corp., 102 F.3d 524, 41 USPQ2d 1001, 1006 (Fed. Cir. 1996). Under the principle known as claim differentiation, limitations of a narrower claim (e.g., a dependent claim) must not be read into a broader claim (e.g., an independent claim). U.S. v. Telectronics, Inc., 857 F.2d 778, 8 USPQ2d 1217, 1221 (Fed. Cir. 1988) cert. denied, 109 S. T. 1954 (1989). However, the principle of claim differentiation is subservient to the mandate of 35 U.S.C. §112, ¶6. Therefore, a means-plus-function limitation cannot be made broader by inserting a dependent claim specifying the specific structure in non-means form. Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 19 USPQ2d 1367 (Fed. Cir. 1991). Other Federal Circuit decisions relating to the issue of claim construction or interpretation include: DMI, Inc. v. Deere & Co., 755 F.2d 1570, 225 USPQ 236 (Fed. Cir. 1985); McGill, Inc. v. John Zink Co., 736 F.2d 666, 221 USPQ 944 (Fed. Cir. 1984), cert. denied, 479 U.S. 931 (1986); and E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 7 USPQ2d 1129 (Fed. Cir. 1988), cert. denied, 488 U.S. 986 (1988); Catalina Marketing Int’l v. Coolsavings.Com, 289 F.3d 801 (Fed. Cir. 2002). 2 ©2016 Staas & Halsey LLP LITERAL INFRINGEMENT Once the claim language has been properly construed, the next step is to determine whether or not literal infringement exists. Literal infringement may be found if a claim, as properly interpreted, reads on the alleged infringing device. Envirotech Corp. v. Al George, Inc., 730 F.2d 753, 221 USPQ 473 (Fed. Cir. 1984). As indicated above, if a claim which reads on a potentially infringing device includes any limitations stated in terms of "means-plus-function" language, then it must be determined whether such a claim limitation is met literally. To make this determination one should "compare the accused structure with the disclosed structure, and must find equivalent structure as well as identity of claimed function for that structure." Pennw alt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 934, 4 USPQ2d 1737, 1739 (Fed. Cir. 1987) (en banc) cert. denied, 108 S. Ct. 1226 (1988). Therefore, in order for a claim including a means-plus-function limitation to be literally infringed, the accused device must employ structure which is identical to, or the equivalent of, the structure, material, or acts described in the patent specification. In addition, the accused device must also perform the identical function which is recited in the limitation. Valmont Industries, Inc. v. Reinke Manufacturing Co., Inc., supra. The Federal Circuit has also made it clear that means-plus-function limitations must always be interpreted in the same fashion regardless of whether the issue is infringement or validity before a court or patentability before the U.S. Patent and Trademark Office. In re Donaldson Co., Inc., 16 F.3d 1189, 29 USPQ2d 1845 (Fed. Cir. 1994). W hat is an "equivalent" under 35 U.S.C. § 112, ¶6? The Federal Circuit has indicated that equivalency under 35 U.S.C. §112, ¶6 should not be confused with the doctrine of equivalents. In re Donaldson, supra.
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