Claims II

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Claims II

• Patent Law - Prof Merges
• 10.23.08

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Main Topics

• Claim Interpretation in Action
• Intro to Equivalents
• Procedural aspects of claim interpretation

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Mangosoft Inc. v. Oracle Corp.

• U.S. Court of Appeals Federal Circuit
• No. 2007-1250
• Decided May 14, 2008
• 525 F3d 1327

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• Prosecustion history also

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• In 2004, the district court construed several
  disputed claim terms after holding a Markman
  hearing. With respect to the term local, it
  held that
• the word localwhen used to modify a computer
  device means a computer device (e.g., a hard
  drive) that is directly attached to a single
  computer's processor by, for example, the
  computer's bus. 
• Mangosoft, Inc. v. Oracle Corp., No. 02-CV-545,
  slip op. at 20 (D.N.H. Sept. 21, 2004)

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Intro to Equivalents

• Wright v. Paulhan, book p. 821
• Wright brothers
• Judge Learned Hand

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Claim 7

• In a flying machine, the combination with an
  aeroplane . . . and means for simultaneously
  moving the lateral portions thereof into
  different angular relations to the normal plane
  of the body of the aeroplane and to each other,
  so as to present to the atmosphere different
  angles of incidence, of a vertical rudder, and
  means whereby said rudder is caused to present to
  the wind that side thereof nearest the side of
  the aeroplane having the smaller angle of
  incidence and offering the least resistance to
  the atmosphere, substantially as described.

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P. 823

• If the connection between the tiller ropes and
  the warping device in a constant proportion, be
  an essential element in the combination patented,
  the planes which the defendant uses are in no
  sense infringements

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• Where the change is only an obvious modification
  of the means specified, and a modification which
  retains each element of the combination
  contributing the same effect as before, the claim
  is not too broad which includes the modification.
  -824

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Additional points

• Pioneer patent doctrine p. 824
• Means plus function language means for
  simultaneously moving the lateral portions
  thereof
• Aelerons covered?

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Contrast with Phillips

• Courts should construe patents by first
  looking into the art to find what the real
  merit of the alleged discovery or invention is.
  Eibel Process Co. v. Minnesota Ontario Paper
  Co., 261 U.S. 45, 63 (1923).
• ? VERSUS exclusive focus in NOTICE

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Markman

• What claim language is at issue?

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Markman

• What claim language is at issue?
• Maintain an inventory total
• Detect and localize spurious additions to
  inventory

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• United States Patent RE33,054
• Markman September 12, 1989 Inventory control and
  reporting system for drycleaning stores
• Abstract
• An inventory control and reporting system
  especially for retail drycleaners includes a data
  input keyboard having key blocks corresponding to
  information for identification and calculation of
  processing costs of laundry articles to be
  cleaned, a data processor adapted to calculate
  pricing information and to generate reports based
  upon such data input, the processor being
  connected to a printer and the processor and
  printer producing sequential multiple part bar
  code records and tags for attachment to the
  laundry articles in sequential transactions, and
  also as hard copies for the customer and for the
  establishment.

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Markman

• Jury Verdict?
• Trial court holding?
• Issue on appeal?

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Seventh Amendment

• Historical test what is it and how does it
  work?

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Seventh Amendment

• Historical test what is it and how does it
  work?
• How is it applied here what did the Court find?
• Cause of action vs. issue in a case

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Markman Highlights

• Historical approach to 7th Amendment Cases
• mongrel practice proceed by analogy
• p. 888
• Deep roots of patent proceedings in 17th-19th
  centuries
• Repeated insistence that legal construction is a
  matter for the courts

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functional considerations - 894

• Institutional competency
• The Federal Circuit revolution comes home to
  roost!
• Uniformity is important
• Statutory objectives

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Document as a whole emphasis

• P. 895
• Lessons for Phillips v AWH?
• Dictionaries vs. specification

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Holding

• Interpretation . . . Is an issue for the judge .
  . .
• p. 896

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What Hath Markman Wrought?

• Crucial importance of the Markman Hearing
• Claim interpretation 1st frames entire case
• Judges are reversed at least as often as juries
  on claim construction!

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Christian Chu

• Reversal rate in patent cases on all issues
  hovered around 47.3, and dropped to 36.3 if
  summary affirmances were included.
• The Federal Circuit changed at least one claim
  interpretation in 44 of its writing opinions
• Modified claim interpretation resulted in
  reversals of 68 of those opinions.

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• Christian Chu, Empirical Analysis of Federal
  Circuit's Claim Construction Trends, 16 Berkeley
  Tech. L.J. 1075 (2001)

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Kimberley Moore

• District court judges improperly construed patent
  claim terms in 33 of the cases appealed to the
  Federal Circuit.
• This rate was higher than the reversal rate on
  other patent issues.

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• Kimberly A. Moore, Are District Court Judges
  Equipped to Resolve Patent Cases?, 15 Harv. J.
  Law Tec 1 (Fall, 2001).
• Kimberly A. Moore, Markman Eight Years Later Is
  Claim Construction More Predictable?, 9 LEWIS
  CLARK L. REV. __, __, __ fig.1 (2005) (reversal
  rate on upward trend)

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Return to Phillips

• Is it appropriate for this court to accord any
  deference to any aspect of trial court claim
  construction rulings? If so, on what aspects, in
  what circumstances, and to what extent? p. 845

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Mayer and Newman, dissenting

• There can be no workable standards by which
  this court will interpret claims so long as we
  are blind to the factual component of the task.
  p. 846

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• Amgen Inc. v. Hoechst Marion Roussel, Inc., 469
  F.3d 1039 (Fed. Cir. 2006). Four judges seemed
  inclined to overrule Cybor. See id. at 1040-1046
  (separate dissents by Michel, C.J., Newman, Rader
  and Moore, JJ.). Three others expressed
  willingness in an appropriate case . . . to
  reconsider limited aspect of the Cybor decision.
  Id. at 1045 (Gajarsa, Linn and Dyk, JJ.).

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• SRAM Corp. v. AD-II Engineering Inc., 465 F.3d
  1351, 80 USPQ2d 1363 (Fed. Cir. 2006) Federal
  Circuit gave no deference to either district
  court claim interpretation or PTO reexamination
  proceeding.