1. Patent Law and Policy University of Oregon Law School Fall 2009 Elizabeth Tedesco Milesnick Patent Law and Policy, Fall 2009 Class 11, Slide 1

2. Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.   Claims are of primary importance.  Furthers public notice for competitors. “The public should not be deprived of rights supposed to belong to it, without being clearly told what it is that limits these rights.”   Comparing claims to accused products, not patentee’s product embodying patent to accused products.   Reissue is limited remedy to revise claims after issuance of patent. Broadening reissue must be sought within 2 years of grant of patent and does not apply retroactively (i.e., infringer must have infringed the pre-reissue claims to have liability). Patent Law and Policy, Fall 2009 Class 11, Slide 2 § 271(a) Infringement

3.  Claim construction analysis  Intrinsic evidence  Claims  “the claims themselves provide substantial guidance”  Specification  “usually dispositive…single best guide”  Prosecution History  Extrinsic evidence  “[C]onsists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises.”  “less signficant” and “less reliable” than intrinsic evidence.  Must be “considered in the context of the intrinsic evidence” and not “contradict” claim meaning based on the intrinsic evidence. Phillips v. AWH Corporation (2005) Patent Law and Policy, Fall 2009 Class 11, Slide 3

4.  Narrow Construction to Save Validity  Ordinary vs. Contextual Meaning  Contextual Meaning May Trump Ordinary Meaning  Patentee May Be His or Her “Own Lexicographer”  Disclaimer of Subject Matter  Claim Differentiation  Purpose of Goal of the Invention Canons of Claim Interpretation Patent Law and Policy, Fall 2009 Class 11, Slide 4

5.  Demonstrates two starkly different, but both reasonable, points of view on the claim construction of “right angle corner border pieces.” Unique Concepts, Inc. v. Brown (1991) Patent Law and Policy, Fall 2009 Class 11, Slide 5 Accused Product Mitered Corner Pieces

6.  “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.” Wright Co. v. Paulhan (1910) Patent Law and Policy, Fall 2009 Class 11, Slide 6

7.  Claim construction is an issue of law for the court to decide.  History does not establish patent claim interpretation as jury issue.  Common law practice shows more often a legal question.  Construction of written instruments is a task for judges.  Credibility of expert witness not likely to be determinative.  Importance of uniformity in claim construction. Markman v. Westview Instruments, Inc. (1996) Patent Law and Policy, Fall 2009 Class 11, Slide 7