OBTAINING DEFENSIBLE PATENTS IN THE PST INDUSTRY

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1 OBTAINING DEFENSIBLE PATENTS IN THE PST INDUSTRY Mark P. Levy, Intellectual Property Practice Group Leader, Thompson Hine LLP., Dayton, Ohio I. The name of the game is the claim. As Judge Rich, one of the most respected Judges on the Court of Appeals for the Federal Circuit, pointed out while explaining American patent law to a group of European judges, the "name of the game is the claim." Giles Rich, The Extent of the Protection and Interpretation of Claims -- American Perspectives, 21 Int'l Rev. Indus. Prop. & Copyright L. 497, 499, 501 (1990). The claims are those numbered paragraphs that appear at the end of a U.S. patent that define the metes and bounds of the invention. Judge Rich's statement rings all the more true today. II. The infringement analysis. A determination of infringement requires a two-step analysis. Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473, 1476, 45 U.S.P.Q.2D (BNA) 1498, 1500 (Fed. Cir. 1998). First, the claim must be properly construed to determine its scope and meaning. Second, the claim as properly construed must be compared to the accused device or process. A patent can be infringed literally or under the doctrine of equivalents. When a patent is infringed literally, the infringing product or activity falls within the literal scope of the patent claims. However, if a infringer's product or process does not fall within the literal scope of the claims in a patent but differs in a manner that can be characterized as "insubstantial," the patent may be infringed under the doctrine of equivalents. Warner-Jenkinson Company, Inc., et al., v. Hilton Davis Chemical Co. 520 U.S. 17; 117 S. Ct. 1040; 137 L. Ed. 2d 146; 1997 U.S. LEXIS 1476 (1997). The doctrine of equivalents prevents an accused infringer from avoiding infringement by changing only minor or insubstantial details of a claimed invention while retaining their essential functionality. Fifteen years ago, patent owners could take substantial consolation in the doctrine of equivalents. If an infringer's activity fell outside the literal scope of the claims, the doctrine of equivalents was, by comparison to today, fairly liberally available to prevent infringers from violating a patent,. This is no longer the case. Today the courts are construing patents more much literally and today the courts are much more conservative in applying the doctrine of equivalents. In particular, today the courts with increasing regularity are placing emphasis on the "notice function" of patent claims. Thus the courts are balancing industry's need to be able to rely upon the literal language of the claims so as to be able to reasonably predict whether a proposed commercial activity infringes against the patentee's need for some flexibility in its claims to protect his or her invention against the copyist, and the today that balance is clearly favoring reliance upon the notice function of the claims. This does not mean that the doctrine of equivalents is dead but that it is being applied in fewer cases to a narrower range of activities.

2 III. Patent prosecution estoppel. The doctrine of equivalents has been narrowed by an expansion of the doctrine of file history or patent prosecution estoppel. The U.S. Supreme Court in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 741, 122 S. Ct. 1831, 152 L. Ed. 2d 944 (2002) held that when a claim is narrowed during prosecution, it creates a presumption that the patentee has surrendered, for purposes of the doctrine of equivalents, all subject matter falling between the scope of the original claim and the scope of the claim as amended. IV. First recommendation do not over-claim the invention. It has been common practice to file patent applications with relatively broad claims that test the limits of the scope of protection that the patent applicant may be entitled to and to wait for the patent examiner to challenge the claims. If an applicant is lucky and the application is examined by an examiner who is very lenient, the applicant may obtain a patent that puts the industry on its heels. However, as a result of the Festo case, there can be serious adverse consequences for the patent applicant who tries to "claim the world" and is not successful. Specifically, if the application is filed with very broad claims and those claims are narrowed substantially as a result of teachings in the prior art or as a result of lack of sufficient enabling technical information in the patent to support the claims, under the Festo ruling the amended limitations in the claims can not be expanded under the doctrine of equivalents. The patent applicant would have been better off to have filed his patent application with narrower claims of an appropriate scope that did not require amendment than to have claimed the world and failed. To illustrate this point, consider two patents that have identical claims: one patent having issued from a broad application with narrowly amended claims, and the other patent having issued from an application with narrow but unamended claims. The second patent would be more valuable than the first because the first patentee is estopped by his narrowing amendments to rely upon the doctrine of equivalents, whereas the second-narrow patentee is not estopped and is entitled to broader protection than his claims literally provide under the doctrine of equivalents. Accordingly, our first recommendation in terms of preparing defensible patents is to understand the teachings in the prior art and to present claims that one is reasonably confident will be allowed by the U.S. Patent and Trademark Office without amendment. In this way, one can avoid estoppels by amendment and preserve one's rights under the doctrine of equivalents. V. Second recommendation avoid making statements about the invention as a whole. It is also important in preparing a patent application to be careful how one describes and characterizes the invention. In fact, in preparing a patent application, it is a good idea to remember the Miranda warning, i.e., anything you say can and will be used against you. In particular it is important to be very careful in referring to "the invention." Indeed, some patent practitioners suggest that the word "invention" should not appear in a patent application! While this seems radical, the patent applicant must be very careful in making any blanket statements regarding the invention as a whole because these statements may be interpreted by the court as a limitation on the scope of the invention. It is preferable for the patent applicant to describe the invention with respect to specific "embodiments" of his or her invention as opposed to the invention as a whole because unequivocal statements defining or narrowly characterizing "the

3 invention" may be used by the infringer to promote a narrow claim construction. By contrast, a statement regarding an "embodiment of the invention" is not as likely to be attributed to or considered as a characterization of the invention and is less dangerous. One practice that is no longer recommended when preparing patents is disclosing a list of the objects of the invention. This is because these objects are typically a series of blanket statements regarding the invention as a whole that can mislead a court to adopt a narrow definition of the invention. These objects can be "read into the claims" as limitations. See Terlep v. Brinkmann Corp WL (Fed. Cir. 2005). For example if you define an object of the invention as providing a tape having a unique adhesion characteristic and yet there are certain embodiments in which the tapes that do not provide such an adhesion characteristic, the claims may be construed by the court as being limited to tapes having the adhesion characteristic. Alternatively, the patent may be challenged on the basis that the claimed invention does not deliver the promised improvement. VI. Third recommendation scrutinize every word in the claim. Within the last year, the Court of Appeals for the Federal Circuit clarified the role of dictionaries in construing the terms of a patent claim in Philips v. AWH Corp., 415 F.3d 1303, 1321 Fed. Cir Prior to Philips, there were two approaches to using dictionaries in construing patent claims. Under one, you started with the generally accepted dictionary or treatise definition of a claim term and then looked to the patent specification to see if there was a compelling reason to use a different definition. Texas Digital Systems, Inc. v. Telegenix, Inc. 308 F.3d 1193 (Fed. Cir. 2002) Under the other, you looked to the patent specification to define the term and then, if necessary, consulted dictionaries and treatises. Alloc, Inc. v. International Trade Commission, 342 F.3d 1361, (Fed. Cir. 2003). In Phillips, the Federal Circuit held that claim terms are interpreted based upon so called intrinsic evidence, i.e., the patent specification and the patent file history, although dictionaries may be consulted as part of the process. Specifically, the Court observed that: "The person of ordinary skill in the art (the person to whom the patent is addressed) is deemed to read the claim not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification." "General purpose dictionaries may be helpful in cases where the ordinary meaning of claim language as understood by a person of skill in the art would be readily apparent even to lay judges, and claim construction in such cases involve little more than application of the widely accepted meaning of commonly understood words." The Court established the following hierarchy for analyzing the terms of the claims: The words of the claims themselves (being highly instructive) The remainder of the specification (always highly relevant)

4 The prosecution history (less useful for claim construction but often informative) Extrinsic evidence (deemed less reliable but helpful to enable a court to better understand the underlying technology and the way in which one of skill in the art might use claim terms). In the Philips case, this analysis actually resulted in the claims in that case being construed somewhat broader than some practitioners might have predicted. The Philips case involved a wall construction incorporating a series of baffles. The alleged infringer urged that the term "baffles" as used in the claims should be construed so as not to include flanges oriented perpendicular to the reinforced wall. The infringer used a perpendicular orientation. The infringer argued that the application attributed a bullet deflecting function to the flanges and because a perpendicular flange would not be capable of deflecting bullets, it should not be considered a flange. The term "baffles" was referred to repeatedly in the specification of the Philips patent (U.S. Patent 4,677,798) as being able to deflect projectiles as a result of their being disposed at angles which tend to deflect bullets, i.e., angles other than 90 degrees. The District Court had agreed with the infringer and held that perpendicular flangers did not infringe the patent because these flangers were not capable to deflecting bullets. However, the Federal Circuit disagreed. Employing the foregoing analysis, The Federal Circuit court held that the term "baffles" as used in the claims could not be construed as excluding structures oriented perpendicular to the wall. In reaching its decision the court reasoned that the term baffles in the broad independent claims should not be construed so narrowly as to render the remaining dependent claims meaningless. Recent decisions of the Federal Circuit have also adopted another doctrine that yields narrow claim constructions and that is the doctrine of claim limitation vitiation or the principle of specific exclusion. This line of cases in some degree conflicts with our first recommendation above. Specifically, under this doctrine, a claim can not be expanded under the doctrine of equivalents if the effect of that expansion would be to effectively nullify, vitiate, or contradict an express limitation of the claims. An earlier case employing this doctrine is Tronzo v. Biomet, 156 F.3d 1154, 1160 (Fed. Cir. 1998). In that case, the Court held that a claim that included an element having a conical shape was not infringed by a device having a hemispherical shape since this would effectively "write the 'generally conical' limitation out of the claim." More recently, in the case of Durel Corporation v. Osram Sylvania, Inc., 256 F.3d 1298 (Fed. Cir. 2001), the Federal Circuit held that a claim to a metal oxide could not be infringed by a claim to a metal hydroxide since a hydroxide can not be an oxide. In Tanabe Seiyaku Co. v. United States ITC, 109 F.3d 726 (Fed. Cir.1997) the applicant filed his application and obtained a patent directed to a process for producing a pharmaceutical by a process that employed acetone as a solvent in an alkylation reaction. The infringer used butanone as a solvent. When the patentee attempted to claim infringement under the doctrine of equivalents, the court found the evidence insufficient to establish that butanone was readily interchangeable with acetone and held there was no infringment.

5 In cases applying the doctrine of claim limitation vitiation, the Federal Circuit has noted that the patent applicant holds the pen. If the patent applicant desires broader protection, the applicant is in a position to define his or her invention appropriately. In Sage Prods. v. Devon Indus., 126 F.3d 1420, 1425 (Fed. Cir. 1997) the court explained the principle this way: If Sage desired broad patent protection for any container that performed a function similar to its claimed container, it could have sought claims with fewer structural encumbrances. Instead, Sage left the PTO with manifestly limited claims that it now seeks to expand through the doctrine of equivalents. However, as between the patentee who had a clear opportunity to negotiate broader claims but did not do so, and the public at large, it is the patentee who must bear the cost of its failure to seek protection for this foreseeable alteration of its claimed structure. In summary, recent decisions from the Federal Circuit regarding the construction of patent claims and the application of the doctrine of equivalents place a premium on artfully drafting and prosecuting the claims of a patent. Claim strategies should be very carefully studied and determined upon filing patent applications. The benefits of broad patent claims need to be offset against the risks of patent prosecution estoppel. Similarly the language used in the patent claims must be carefully analyzed in light of the patent specification to identify statements or disclosures that could lead to the claims being more narrowly construed than the applicant may have intended