BASIC LAW FOR INFRINGEMENT ANALYSIS

Present By: Daniel J. Kluth, shareholder Edward J. Brooks III, officer Schwegman, Lundberg, Woessner & Kluth, P.A. April 26th, 2001 Copyright: The Schwegman Institute Opinion Seminar Series

What Well Cover/Infringement Analysis

The When/Why/How of Opinions Rules of Claim Construction Literal Infringement Infringement under the Doctrine of Equivalents Practical Tips for Opinion Practice

What We Wont Cover Today

Validity Analysis Enforceability Analysis

Overview
Determining Infringement is a Two-Step Process Claim Construction Determining the Meaning of the claim terms and the scope of the claims Comparison of the Properly Construed Claims to the Accused Device

Who is Asking for an Opinion and Why?

Offensive Purpose
Charge of Infringement Support a Cease and Desist Letter Support a Complaint filed in Court

Defensive Purpose
Charged with Infringement Design Around Protect Against Willful Infringement

Market Clearance/Due Diligence

Assess the Risk of Liability Assess the Value of Patent

Competent Opinion
Outside Independent Counsel In Writing List the Facts/Applicable Law Apply the Facts to the Law Timeliness

What is the Basis of the Opinion

Alleged Infringed Patent File History of the Patent All Prior Art Cited during Prosecution A reliable description of the Accused Device Other Possible Evidence Reliance on Legal Authority/Scientific Principals

Liability for the Patent Attorney

Thoroughness Diligence Objectiveness

Rules of Claim Construction/Markman

Claim Construction as a Matter of Law Intrinsic Evidence
Claim language Written Description Accompanying Drawings Prosecution History

Extrinsic Evidence
Inventor/Expert Testimony Treatises/Technical Articles

Vitronics/Donaldson/SRI Intl
Claim terms are to be given their ordinary and customary meaning in the field of invention When the specification explains and defines a term used in the claims, without ambiguity or incompleteness, stop there Means Plus Function Claims Prosecution History Estoppel

Mechanics of Claim Construction

Claims Chart
Claims Specification File History

Claim Paragraphs Support in The Specification

Literal Infringement Analysis

Applying the Properly Construed Claims to the Accused Product or Process The question of infringement is a question of fact for a jury Each and every element must read on the accused device Each claim stands on its own Means-Plus-Function claims, the accused device must perform the identical function required by the claim limitation, and must have identical or equivalent structure to that disclosed in the specification

Mechanics of Claim Comparison

Claims Comparison Chart Copying Public Notice Ambiguous/Vague Claims

Reverse Doctrine of Equivalents

Literal InfringementThe Doctrine in Reverse Occurs when all the claim elements of an asserted patent are literally found in the accused device May, nevertheless not infringe if the product or process the product or process is so far changed in principle from a patented article that if performs the same or similar function in a substantially different way One should return to the specification and claim interpretation to clearly articulate the substantiality of these differences

Infringement under Doctrine of Equivalents

Equitable Doctrine Affords protection to inventions where a product avoids the literal language of the claim by making a noncritical change Each element contained in a patent claim is deemed material to defining the scope of the patented invention Determine if the differences between the elements of the claimed invention and the suspect infringing device or process are insubstantial Question of Fact

Function-Way-Result/Graver Tank
Function-Way-Result Test
Does the non-literally infringing element perform substantially the same function, in substantially the same way, to obtain the same result

All Element Test/Pennwalt

Can an equivalent can be found within the Accused Device for every limitation in the claim

Hypothetical Claim Test/Wilson Sporting Goods

Another Approach/Hilton Davis

Substantiality of the Differences Were elements of the accused and claimed devices were known to be interchangeable at the time of infringement If the substitute was not known to be interchangeable, would the ordinary artisan would have considered the change insubstantial at the time of infringement/Pennwalt

Substantiality of Differences/Timing
Substantiality of the differences is to be based on resolving the question of whether the accused product or process contains elements identical or equivalent to each claimed element of the patented invention The proper time for evaluating equivalency is at the time of infringement, not at the time the patent issued

Other Factors
Copying Design Around Pioneering aspects of the invention Significant Advantage

Prior Art/File History Estoppel

Warner Jenkinson/Wilson Sporting Goods/Festo Limits the range of permissible equivalents is limited by the prior art and the file history Statements made by the USPTO examiner or the patent applicant which shed some light on the scope of the claims

Effect
Prosecution history estoppel precludes a patentee from obtaining coverage of subject matter that has been relinquished during the prosecution Complete bar to the application of the doctrine of equivalents to any claim elements narrowed during patent prosecution in order to achieve patentability Presumption that the limitation was added for reasons related to patentability

Unsettled Legal Issues

Means-Plus-Function language is interpreted to cover the corresponding structure, material, or acts described in the specification, and the equivalents thereof ??? Only those equivalents expressly set for in the specification

Festo?
Certiorari Granted Amendments Related to Patentability
changes needed not only to overcome the prior art Changes needed to overcome indefiniteness rejections

All amendments potentially raise the specter of restricting the applicants available protection under the doctrine of equivalents

Portfolio IP Presentation given by Tom F. Brennan

jkalis@slwk.com