Patents - claim construction Flashcards
BASIC STEPS
S.125(1) - claims interpreted in light of description and drawings
Kiren Amgen - ask what a PSITA would have understood the patentee (or drafter) to have used the words to mean
- not what patentee actually meant
- not what PSITA thinks it means
Improver questions = useful but not required (most useful in mechanical or biological patents)
EMI v Lissen
UK STARTING POINT
Lord Russell: primary object is to limit and not extend monopoly
- hard line approach
- very black letter
- strict literalistic approach
Pith & Marrow
grew up alongside UK’s literalistic approach
- recognises that outright duplication is a rare kind of infringement
- applied after literal analysis
- if only substituting non-essential integers
Van der Lily v Bamford
courts favoured narrow, literalistic, construction
- front wheels dismounted instead of rear wheels
- P&M exists but English conservative approach applies
- NO INFRINEGMNET
- narrow literalistic construction prevailed
EPC Art.69 + Protocol on art.69
BALANCE strict approach and purposive approach
Catnic v Hill
towards a more purposive approach?
- “vertically”
- D used 84 degrees (as far away from vertical as possible without losing support)
= INFRINGEMENT
- no p&m doctrine
- one single cause of action
- give specification PURPOSIVE INTERPRETATION
- would PSITA understand strict compliance was intended to be an essential requirement?
Improver v Remington
C = coiled helical spring
D = slotted rod
- same open and close mechanism
= NOT INFRINGED
3 stage test:
ONE - does variant have material effect on the way the invention works? if no… (here no)
TWO - would this variant have been obvious at date of publication to PSITA? if yes… (here yes)
THREE - would PSITA nevertheless have understood from language that patentee intended strict compliance with primary meaning was an essential requirement of the invention? if yes, no infringement (here yes)
Improver v Remington (German)
broad functional construction
- what was the purpose of spring?
- D’s rod does the same thing
- PSITA would not interpret coil as spring but rather as a body with gaps
PLG v Arden
only challenge to improver
- stretched netting from “substantially uniplanar” material
- D used material with grooves
= INFRINGED
- purposive interpretation
- D’s material engineered to achieve same result
- Millet LJ rejected Improver in favour of a more protocol friendly approach
Wheatley v Drillsafe
- new way of drilling holes
- D did same thing but with retractactable central spindle
= NOT infringed
- followed Improver and rebranded Improver as Protocol questions
ART.2 DOCTRINE OF EQUIVALENTS
Kiren Amgen
- art.2 just says “purposive” construction
- art.69 knocks out doctrine of equivalents
- BUT CGK of PSITA might incl. equivalents
Rockwater v Technip
- Jacobs LJ said no doctrine of equivalents
Kiren Amgen (Case)
patented a method of developing EPO
- held: improver Q is not the starting point
- simply ask: what would PSITA have understood patentee to have meant?
- use improver to support analysis in mechanical/biological patents
Anacon v ACS
Head of a bolt must have “generally elliptical cone shape”
- D had no eclipse on top
= INFRINGED
- PSITA would not consider head of bolt materially important (so loose meaning is fine)
- hard to describe new things using old words
- elliptical is clearly not a strict geometrical shape
Occulutech v AGA
“Clamps”
- D used weld
- patentee included a list of things he considered equivalent (incl. weld)
= NO INFRINGEMENT
- IGNORED patentee’s list
- went to dictionary to define clamp
- weld does not fall within clamp
- TOWARDS literalism
Virgin Atlantic
numbers do not limit claims
- convention: numbering parts to help understanding
- PSITA understand this and knows drafting conventions
