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CLAIM CONSTRUCTION FROM THE PERSPECTIVE OF A TRIAL LAWYER

Presented by: Jerry R. Selinger

OVERVIEW OF CLAIM CONSTRUCTION Start from a goal

avoid infringement (accused infringer) Avoid prior art but read on accused device(patentee)

General guidelines from the Federal Circuit

2

Phillips , 415 F.3d 1303 (Fed. Cir. 2005) (en banc)

In determining the meaning of a claim term, a court may look to: the language of the claims, the specification, prosecution history, and extrinsic evidence.

3

Phillips, 415 F.3d at 1312-1313

Claim terms are “generally given their ordinary and customary meaning.”

Ordinary meaning is “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention” and “in the context of the entire patent.”

4

Phillips, 415 F.3d at 1315 “[T]he specification is always highly relevant to

the claim construction analysis.” “Usually, it is dispositive; it is the single best

guide to the meaning of a disputed term.”

5

Phillips, 415 F.3d at 1316 A patentee may define his own terms,

give a claim term a different meaning than the term would otherwise possess,

or disclaim or disavow claim scope. Or a patentee may rely on the meaning a term

would have to one of ordinary skill in the art.

6

Thorner v. Sony (Fed. Cir. Feb. 1, 2012)

To act as a lexicographer, the patentee must clearly do so by setting forth a definition of the term other than its plain and ordinary meaning. The claim term was “attached to said pad.” Sony argued specification used “attached” to refer to

outside connection and “embedded” for internal connection.

District court ruled that “specification redefines ‘attached’ by implication”

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Thorner v. Sony (Fed. Cir. Feb. 1, 2012)

The Federal Circuit disagreed disavowal and lexicography require a clear and

explicit statement by the patentee Stated that merely disclosing an embodiment, or

criticizing a prior structure is not disavowal Sought to distinguish cases as being “pre-Phillips”

8

K-2 Corp., 191 F.3d 1356 (Fed. Cir. 1999) In claim construction, “[c]ourts do not rewrite

claims; instead, we give effect to the terms chosen by the patentee.”

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Narrowing Claims Both claim amendments and statements to

distinguish a claim over prior art can narrow claim scope. Spectrum Int’l, Inc. v. Sterilite Corp., 164 F.3d 1372, 1378 (Fed. Cir. 1998)

The “prosecution history limits the interpretation of claim terms so as to exclude any interpretation that was disclaimed during prosecution.” Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576 (Fed. Cir. 1995)

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Deference to the District Court? Since 1998, claim construction has been a

question of law for the court. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456

(Fed. Cir. 1998) (en banc) The Federal Circuit gives district court claim

constructions no deference. Even if the district court heard conflicting expert

testimony

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Deference (cont’d.) The absence of any deference bothers district

court judges. It is why the Federal Circuit’s reversal rate on

claim construction has been so high. And the issue of claim construction as a pure

issue of law is a topic of internal debate at the Federal Circuit.

THE ROLE OF THE SPECIFICATION Ongoing debate over line-drawing

Within the Federal Circuit

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The Role of the Specification It is improper to import a limitation from the

specification into the claims. See Phillips, 415 F.3d at 1323.

But there “is a fine line between construing the claims in light of the specification and improperly importing a limitation from the specification into the claims.” Retractable Tech., Inc. v. Becton, Dickinson & Co.,

653 F. 3d 1296, 1323-24 (Fed. Cir. 2011)

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Retractable Tech., 653 F. 3d 1296

In “reviewing the intrinsic evidence to construe the claims, we strive to capture the scope of the actual invention,” “rather than strictly limit the scope of claims to

disclosed embodiments” “or allow the claim language to become divorced from

what the specification conveys is the invention.”

15

Retractable Tech., 653 F. 3d 1296

In Retractable Tech., while the claims left open the possibility that a “body”

might encompass a syringe body composed of more than one piece, “the specification tells us otherwise.”

Consequently, a construction of “body” that limits the term to a one-piece body “is required to tether the claims to what the specifications indicate the inventor actually invented.”

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Retractable Tech., 653 F. 3d 1296

Chief Judge Rader dissented: “The ordinary and customary meaning of ‘body’ does

not inherently contain a one-piece structural limitation.”

The “claims themselves, not the written description portion of the specification, define the patented invention.”

17

Atlantic Research, (Fed. Cir. 10/6/11) Patentee sought to limit claim construction

Argued that certain claims should not be construed more broadly than the specification.

The district court construed those claims as written and held them invalid for failure to meet the written description requirement of § 112, ¶ 1.

Federal Circuit affirmed It refused to ignore substantive differences between

claims or to “eviscerate” the plain meaning of the claim language.

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On Demand , 442 F.3d 1331 (Fed. Cir. 2006) Dispute over construction of “customer” Was “customer” limited to a retail customer? Or

anyone “who buys goods or services”? “The focus of the patent is immediate single-copy

printing and binding initiated by the customer and conducted at the customer’s site.”

The “definition of ‘customer’ cannot eliminate these constraints in order to embrace the remote large scale production of books for publishers and retailers.”

19

Alloc, Inc. v. ITC, 342 F.3d 1361 (Fed. Cir. 2003)

Three patents all shared a common specification and claimed systems and methods of joining floor panels.

The Commission held that the claims all included a “play” limitation, although none of the asserted claims recited the term “play.” Id. at 1368

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Alloc, 342 F.3d 1361 The Federal Circuit affirmed, explaining that it

looks to whether “the specification read as a whole suggests the very character of the invention requires the limitation be a part of every embodiment.” Id. at 1370

The common specification “read as a whole leads to the inescapable conclusion that the claimed invention must include play in every embodiment.” Id.

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THE EVOLUTION OF § 112, ¶ 6 Following In Re Donaldson Co., 16 F.3d 1189

(Fed. Cir. 1994)

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The Language of § 112, ¶ 6 “An element in a claim for a combination may be

expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material or acts described in the specification and equivalents thereof.” 35 U.S.C. § 112, ¶ 6

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Application of § 112, ¶ 6 When a claim uses the term "means" in a

limitation, the inventor is presumed to have used the term to invoke 35 U.S.C. § 112, ¶ 6.

A court must first identify the function of the limitation and then identify the corresponding structure for that function disclosed in the specification and linked to the function. B. Braun Med., Inc. v. Abbott Labs, 124 F.3d 1419,

1429 (Fed. Cir. 1997); In re Aoyama, 656 F.3d 1293, 1297 (Fed. Cir. 2011)

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In re Aoyama, 656 F.3d 1293(Fed. Cir. 2011)

This was an appeal from the PTO. Claims are given their “broadest reasonable

interpretation” during prosecution. Which is a different standard than applied during

litigation However, for means-plus-function limitations, the

“broadest reasonable interpretation” is the same scope “statutorily mandated in paragraph six.”

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In re Aoyama, 656 F.3d 1293 The dispute was about what structure was disclosed

in the specification and linked to the function of “generating transfer data.”

The Board of Appeals found the function was linked to “the flowchart of Figure 8.”

However, Figure 8 disclosed insufficient structure so the Board expanded its construction of “transfer data” to include “shipping data.”

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In re Aoyama, 656 F.3d 1293 “The Board erred by identifying structure that was not

clearly linked or associated by the specification or prosecution history with the function actually recited in the claim, i.e., ‘generating transfer data.’”

The only portion of the specification linked to the function is the flowchart of Figure 8.

The Board determined that Figure 8 “does not contain sufficient structure to support the limitation.”

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In re Aoyama, 656 F.3d 1293 Where the disclosed structure is a computer

programmed to implement an algorithm, the patent must disclose enough of an algorithm to provide the necessary structure under § 112, ¶ 6.

“The patentee may express this algorithm in any understandable manner, including as a flowchart, so long as sufficient structure is disclosed.”

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In re Aoyama, 656 F.3d 1293 “Figure 8 fails to describe, even at a high level, how a

computer could be programmed to produce the structure that provides the results described . . . .”

Because there is insufficient disclosure of structure under § 112, ¶ 6, these claims are unpatentable as indefinite under § 112, ¶ 2.

29

In re Katz, 639 F.3d 1303 (Fed. Cir. 2011) Began by referring to, Aristocrat, 521 F.3d at 1330-31,

where disclosed structure of “a standard micro-processor based gaming machine” with “appropriate programming” was indefinite. An algorithm needed to be disclosed to avoid pure functional

claiming. Pure functional claiming means all structure that could

perform the recited function.

30

In re Katz, 639 F.3d 1303 One limitation in dispute was

“a processing means . . . for receiving customer number data entered by a caller and for storing the customer number data . . . and based on a condition coupling an incoming call to the operator terminal . . . .”

The patent did not disclose an algorithm corresponding to the highlighted language.

One claiming a processor programmed to perform a specialized function must disclose the internal structure of that processor in the form of an algorithm or the claim is invalid under § 112, ¶ 2.

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In re Katz, 639 F.3d 1303 Other claims recited “processing,” “receiving,” and

“storing.” Those functions can be achieved by any general

purpose computer without special programming. So the only structure needed to be disclosed was the

general purpose processor that performs those functions.

But see Ergo Licensing (Fed. Cir. 3/26/12) It is a rare circumstance when a general purpose computer,

without a disclosed algorithm, can constitute the structure under § 112, ¶ 6.

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In re Katz, 639 F.3d 1303 Still other claims recited a system with an “interface

means for providing automated voice messages . . . to certain of said individual callers, wherein said certain of said individual callers digital enter data.”

IPXL, 430 F.3d 1377, held claims indefinite because they claimed both an apparatus and a method of use.

The Court rejected Katz’s argument that IPXL did not apply because the “wherein” language defines functional capability, not a method step.

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Micro Chem., 194 F.3d 1250 (Fed. Cir. 1999)

If the word “means” is not used, a claim element is presumed NOT to invoke § 112, ¶ 6.

But the presumption is overcome when a limitation relies on functional language without reciting sufficient structure to perform the function.

34

MIT , 462 F.3d 1344 (Fed. Cir. 2006) Claim term was “colorant selection mechanism for

receiving said modified appearance signals and for selecting corresponding reproduction signals representing values of said reproducing colorants to produce in said medium a colorimetrically-matched reproduction.”

Federal Circuit agreed the term needed to be construed under § 112, ¶ 6.

35

Nilssen, 80 F. Supp. 2d 921 (ND IL. 2000) The court assumed “[f]or example that a claim

element specifies three functions, while the only structure referred to there provides support for just two of the three functions.”

In that situation “Paragraph 6 governs the claim element” even if “means” is not used.

36

Defining the Bounds of § 112, ¶ 6 Microprocessor Enhancement Corp v. Texas

Instruments, Inc., 520 F.3d 1367 (Fed. Cir. 2008) Apparatus claims may use functional language to limit

the claims “without using the means-plus-function format.”

Where the claim uses functional language but recites insufficient structure, § 112, ¶ 6 may apply despite the lack of “means for” language.

37

Defining the Bounds of § 112, ¶ 6 HTC Corp v. IPCom GMBH & Co., KG (Fed. Cir.

January 30, 2012) The limitation “arrangement for reactivating” was

construed under § 112, ¶ 6, even though it did not use the word “means.”

The specification needed to disclose adequate hardware structure and software structure.

But those are arguments the lawyers had to make to the district court to preserve the arguments for appeal.

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Defining the Bounds of § 112, ¶ 6 Typhoon Touch Techs., Inc. v. Dell, Inc. 659 F.

3d 1376 (Fed. Cir. 2011) “a memory for storing at least one data collection

application configured to determine contents and formats of said inquiries displayed on said screen.”

The district court construed this to be a “memory that must perform the recited function.”

Typhoon complained that the district court improperly included a “use’ limitation in an apparatus claim.

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Typhoon Touch, 659 F. 3d 1376 Typhoon argued that it suffices if the memory is

capable of being configured to store data collection applications, even if the memory is not so configured.

The district court held that the memory is actually programmed or configured to store the data collection application.

“No error of law or fact has been shown” in requiring that the device be structured to store at least one data collection application.

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Typhoon Touch, 659 F. 3d 1376 “Means for cross-referencing said responses

with one of said libraries of said possible responses” District court held the specification did not contain an

“algorithm” adequate to provide structure. The Federal Circuit disagreed.

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Typhoon Touch, 659 F. 3d 1376 An algorithm can be expressed “in any

understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any matter that provides sufficient structure.”

“The specification states that cross-referencing entails the steps of data entry, then storage of data in memory, then the search in a library of responses, then the determination if a match exists, and then reporting action if a match is found.”

That is a sufficient recitation, in prose, of the algorithm.

42

Recent District court Markman rulings Alfred Levine v. Samsung, et al., No. 2:09-cv-

372 (ED TX) eDigital Corporation, et al. v. HTC America, Inc.,

et al., No. 09-cv-02578 (D CO) VPS, LLC v. SNO Studios, et al., No. 1:10-cv-

2142 (ND IL)

43

Levine , No. 2:09-cv-372 (ED TX) “Electronic Wireless Navigation System” Abstract:

An electronic navigation system using wirelessly transmitted video map images from one or more ground based transmitters together with wireless receivers having visual display available to travelers, for receiving and displaying the video map images. In one embodiment a cellular system is provided using video map images covering different zones or cells of a city or other community.

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A picture is worth 1000 words

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Levine , No. 2:09-cv-372 2 patents, 13 claims in issue

Claims 1, 3, 12-15 of No. 6,140, 943 and claims 1-3, 8, 14, 15 and 21 of No.6,243, 030

“Video maps” – Defendants sought: “maps encoded as a video signal” The inventor agreed that “video map” is some kind of

“video signal” Spec disclosed downloading and converting into

analog signal form court construction: “maps that can be visually

displayed on the display of a wireless receiving device”

46

Levine , No. 2:09-cv-372 “Zones,” “cellular zones”

Defendants sought: “a predefined subdivision of a larger geographic area that is associated with a transmitter”

The dispute was whether the associated transmitter must at a minimum transmit a map of its own zone

“Neither the claim language nor the written description justify a finding that the transmitter cannot transmit a local area map for a different zone.”

court construction: “subdivision(s) of a larger geographic area that is/are associated with a transmitter”

47

Levine , No. 2:09-cv-372 “said receiver having a visual display . . . and

having means that responds to the traveler becoming proximate to any of said streets to change the display to remove that street name from the visual display”

One dispute was whether the claim should be construed under § 112, ¶ 6.

Another dispute was over the correct definition of function.

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Levine , No. 2:09-cv-372 Plaintiff argued the function was the language

beginning with “change.” Defendants argued the function was, in essence,

everything after “means that.” The court agreed with Defendants on this issue.

49

Levine , No. 2:09-cv-372 Plaintiff argued the structure could be a GPS

receiver circuit. Defendants argued the structure was an

ultrasonic generator, detector transducer, retroreflector, converter and an image selector circuit.

The court generally agreed with Defendants But added as alternative structure video image signal

transmitter, receiving antenna 17, signal detector 18, and image selector circuit/processor 24.

50

Levine , No. 2:09-cv-372 “a map containing street-road signs in the area

of the location of the receiver” Plaintiff argued this meant the names of streets

or roads in the area Defendants argued the map must depict traffic

signs containing identification information for roads.

The district court agreed with Defendants.

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eDigital, No. 09-cv-02578 (D CO) U.S. Patent Nos. 5,491,774 and 5,742, 737 Abstract:

“A record/playback device for use with a removable, interchangeable, flash memory recording medium which enables extended recording comparable with tape cassette dictating equipment. The device includes a housing, a microphone element, control circuitry and a switch mounted on the housing for selecting desired functional operations. A receiving socket is coupled to memory circuitry . . . and is configured for electrical coupling with a flash memory module . . . .”

52

eDigital, No. 09-cv-02578 (D CO) One core term in dispute

That flash memory is the “sole memory of the received processed sound electrical signals.”

Plaintiff - the device may use RAM as memory to hold data while it processes the sound signal into digital data ready for storage.

Defendants - flash memory must be the sole writeable memory in the device and that no RAM may be used at any point in the device’s operation.

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eDigital, No. 09-cv-02578 (D CO) According to the district court,

Applicant had acted as his own lexicographer, defining “processed sound signals” to mean the output of three stages in the device.

Once the information had passed through an A/D converter, the patent referred to it as something other than “processed sound signals.”

Flash memory must be the sole way by which the signals are thereafter stored in memory. Supported by argument during prosecution to overcome prior

art and extrinsic expert testimony

54

VPS, No. 10-cv-2142 (ND IL) Three related patents:

Nos. 6,321,231; 6,332,146 and 7,487,155 Field of the Invention:

“The present invention relates generally to data management and publishing, and, more particularly, to a data management and order delivery system for providing storage of data such as digital images and for routing and delivering orders incorporating a selected subset of the stored data to a publishing facility or the like.”

55

VPS, No. 10-cv-2142 (ND IL) The specification conveys the twin concepts of:

(1) access to every provider’s stored images being limited to only persons authorized by the specific image provider to view the images of that specific image provider, and

(2) stored images of every image provider being transparent (i.e., invisible) to all others entitled to access the closed system, are a critical aspect of the invention.

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VPS, No. 10-cv-2142 (ND IL) “Significantly, the digital data of every image

provider user 14 is transparent to all users except those users authorized to view the data.

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VPS, No. 10-cv-2142 (ND IL) The specification discusses the features that

together work to impose complete transparency. One feature is called an authorization scheme. “Each image provider user 14 is isolated from all

other image provider users 14 by a unique client identification number.” Moreover, “[e]ach image provider user 14 can specify users . . . who are to be granted access to the files of that particular image provider user 14. Each such specified user is assigned a user name and password.”

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VPS, No. 10-cv-2142 (ND IL) Each user also “is assigned a unique prefix code . . . .

[which] is used to secure the file stored in the database management system from unauthorized access.”

Thus, access is granted not to the system in general, but to specific image files of a particular image provider.

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VPS, No. 10-cv-2142 (ND IL) The second feature is called a login routine. “When the system determines that a user 12, 14, 16

is attempting to log in, the login routine is called.” “[T]he internet server 24 determines whether the

subject user has entered a valid client identification number, a valid user identification name authorized by the client and the appropriate password. If at any of these steps the system determines that an incorrect response has been entered, the login routine is terminated.”

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The Claims are Limited to the System “Transparent/transparency”

“Having the properties that all users who are not explicitly authorized and granted permission by each asset provider/image provider to access such provider’s digital images are prevented by the system from accessing any such images and even from being able to tell that any such provider has stored any images on the system.”

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The claims are limited to the system “Authorized users identified by/user”

“A person for which an image provider has entered contact and security status information into the system’s administrative program, which person has then registered with the system and been assigned a user name and password linked to the designating person’s unique client identification number.”

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Terms not using means and §112, ¶ 6 A storage device for [1] providing storage for digital

images of a plurality of unrelated image providers the storage device storing the digital images of a first one of the image providers [2] such that the digital images of the first image provider can only be accessed by authorized users identified by the first image provider and [3] such that the digital images of the first image provider are transparent to users that are not authorized by the first image provider, the high resolution digital images stored in the storage device being received via the Internet.

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Terms not using means and §112, ¶ 6 My proposed construction is under § 112, ¶ 6

A “storage device” stores digital data, and does not have the functionality to perform the second and third recited functions, viz., limiting access to only authorized users and transparency.

The specification discloses that the actual storing function is performed by an optical data reader serviced by an optical disk robot or a tape robot, together with database server 30. Col. 6, lines 20-25. “[T]ask specific servers” – not a storage device – are used to limit access to users authorized by the image provider and to make images transparent to all other users.

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Terms not using means and §112, ¶ 6 My proposed construction is under § 112, ¶ 6

A “storage device” stores digital data, and does not have the functionality to perform the second and third recited functions, viz., limiting access to only authorized users and transparency.

The specification discloses that the actual storing function is performed by an optical data reader serviced by an optical disk robot or a tape robot, together with database server 30. Col. 6, lines 20-25. “[T]ask specific servers” – not a storage device – are used to limit access to users authorized by the image provider and to make images transparent to all other users.

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Terms not using means and §112, ¶ 6 Why does this matter? The task-specific servers require hardware and

software But no software or algorithm is disclosed The specification thus fails to disclose adequate

software structure for performing the limiting access and transparency functions of this limitation. In re Katz, 639 F.3d at 1315; In re Aoyama, 659 F.3d at 1297.

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Terms Not Using Means and §112, ¶ 6 “a storage device for storing digital images received

from a first digital image provider and a second digital image provider.”

This term has a different construction because it needs to perform a different subset of functions. Not § 112, ¶ 6, but limited by functional recitations

It must perform the function of storing digital images received from a first digital image provider and a second image provider. Typhoon Touch. Why does this matter?

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Term Using Means and §112, ¶ 6 “means for notifying an authorized user

identified by the first image provider that the authorized user has been authorized to download a low resolution copy corresponding to one of the high resolution digital images, wherein the notifying means transmits at least a portion of a pathname associated with the low resolution copy to the authorized user” (underlining added).

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Term using means and §112, ¶ 6 Dispute over function

“notifying” notifying an authorized user identified by the first

image provider that the authorized user has been authorized to download a low resolution copy corresponding to one of the high resolution digital images

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Term Using Means and §112, ¶ 6 Why this matters

There is no structure disclosed in the specification that is linked to my view of function.

The specification does disclose notifying a receiving user that a job order is being sent.

That, however, is very different from “notifying an authorized user identified by the first image provider that the authorized user has been authorized to download a low resolution copy corresponding to one of the high resolution digital images . . . .”

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Tips on Claim Drafting Do not write “the invention is”

If you described a closed system, your claims may be limited to such a system.

Carefully consider arguments you make during prosecution.

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Tips on Claim Drafting Make sure claims are supported by disclosure in

the specification. Drafting broadly can be good, Unless the specification does not enable a broad

coverage. If using functional language, consider

infringement.

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THANK YOU QUESTIONS?

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