US Claim Construction

Question 1

Phillips v AWH, 415 F3d 1303 (Fed Cir 2005)

Answer 1

1. Claim terms must be given their ordinary and customary meaning as understood by PSA= Kirin Amgen similar
2. Common phrases do not require additional analysis
3. Analysis of disputed terms begins with the words of the claim used

AND THEN

Hierarchy of interpretative sources:

Primary importance (intrinsic evidence)
1. Patent Claims;
2. Specification;
3. Prosecution history;
UK- no look at prosecution

Secondary importance (extrinsic evidence):
1. Expert and inventor testimony
2. Dictionaries and treatises
UK- no look at inventor

Question 2

Mayo Collaborative Services v Prometheus, 132 S Ct 1289 (2012)

Answer 2

MAYO TEST

1. Claim is to a process, machine, manufacture or composition.
   - if not claim is not eligible
2. Claim is related to natural phenomenon, nature or abstract idea.
   -Similar to “as such” UK.
   -if no, claim is eligible
   BUT! i.e. gene sequence goes to step 3
3. Does the claim have additional features?
   - Similar to “technicality and practicality” in UK
   i. e. gene sequence and something else- YES

Question 3

Alice Corp. Pty. Ltd. v. CLS Bank Int’l, S.Ct. 2347 (2014)

Answer 3

Confirms Mayo

Question 4

Diamond v Chakrabarty, 447 US 303 (1980)

Answer 4

“anything under the sun that is made by man” is patentable.

A very broad test

Question 5

Markman v Westview, 517 US 370 (1996)

Answer 5

Before this case- jury not judge.
The construction of patent claims is a matter of law (for the judge and not for the jury)

Two prong approach:

1. determine scope and meaning of claims= judge
2. judges looks at claims and determines infringement.

Question 6

Warner-Jenkinson v Hilton Davis, 520 US 17 (1997)

Answer 6

DOCTRINE OF EQUIVALENCE

Limitations:

1. The doctrine of equivalents can only be “applied to individual limitations of a claim, not a claim as a whole”
2. It cannot be used to completely eliminate an entire claim

The assessment of equivalents is at the time of infringement (what happened from date of filling to the date of infringement can be taken into account).

Triple identity test (trinity): Does the element of the accused invention perform:

1. Substantially the same function
2. In substantially the same way
3. To achieve substantially the same result.

PROSECUTION FILE ESTOPPEL

• can’t go back and change
• stopped from arguing in court a meaning that is contrary to what you said it was before
• can’t claim equivalence if u initially said something is not covered

Question 7

Festo v Shoketsu, 525 US 722 (2002)

Answer 7

PROSECUTION FILE ESTOPPEL

A presumption that prosecution history estoppel prohibits the application as to the amended claim element where:

1. The amendment was made to overcome the prior art;
2. The amendment was to bring the claim within patentable subject matter
3. The amendment was to satisfy the non-obviousness requirement;
4. The amendment was to provide sufficient disclosure

If change is made to keep patent valid (not overlapping with another) then the applicant will be presumed to have given up the right to complain about anything broader than the patent itself.

The presumption can be attacked/rebutted where:

1. The equivalent was unforseeable at the time of the application= because it covers future developments
2. The reason for the amendment only tangential/not specific relation to the equivalent in question.
3. Some other reason suggesting the patentee could not reasonably be expected to describe the equivalent.

Question 8

Johnson & Johnson, 285 F3d 1046 (Fed Cir 2002)

Answer 8

Where something is disclosed in the patent but not claimed it cannot be an equivalent (public dedication).