1. Claims II Patent Law - Prof Merges 10.27.2011

2. Main Topics Phillips cont’d: spec-claim issues; “canons” Approaches to claim construction – Predictability; notice; 3 rd party rights – VS.: “Purposive,” plumb the essence of the invention; see what the inventor contributed and interpret claims accordingly Procedural aspects of claim interpretation

3. Spec-Claim Issues VERY fine line between “interpreting claim in light of spec” [REQ’D by Phillips] and “reading a limitation into a claim from the spec” [NOT OK, prohibited by many cases

4. Contextual meaning Nystrom v. Trex, book p. 823 Claim covered “board for use in constructing a flooring surface” Spec: equates “decking material” with “lumber cut from … logs” Held: boards are WOOD ONLY

5. Lexicographer rule Patentee may be his (or her) own lexicographer; Kopykake, p. 825 Definition of “photocopy machine” Spec: Where scanning and image reproduction are separate, but produce a copy, they “define a photocopy machine as that term is used herein.” Held: INFRINGED

6. Claim differentiation “When different words or phrases are used in separate claims, a difference in meaning is presumed.” Book, p. 828 Nystrom v. Trex: Claim 16 claimed “a wooden board”, so patentee argued claim 1 could NOT be limited to boards made of wood Held: Wrong; spec still dominates analysis

7. Wright v. Paulhan Basic facts, doctrine Contrast with approach in Phillips

8. Judge Learned Hand

11. 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.

12. P. 823 [I]f 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 …

13. 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

14. Additional points “Pioneer patent” doctrine – p. 824 “Means plus function” language: “means for simultaneously moving the lateral portions thereof …” Aelerons covered?

15. Contrast with Phillips Courts should construe patents by “first look[ing] 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 on NOTICE

16. Markman Start with the actual case, then on to the “revolution” What claim language is at issue?

17. Markman What claim language is at issue? – “Maintain an inventory total” – “Detect and localize spurious additions to inventory”

18. 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.

21. Markman Jury Verdict? Trial court holding? Issue on appeal?

22. Seventh Amendment “Historical test” – what is it and how does it work?

23. 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

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

25. Justice Benjamin Curtis

26. Today’s Digression: Dred Scott

27. “functional considerations” - 894 Institutional competency – The Federal Circuit revolution comes home to roost! – Uniformity is important Statutory objectives

28. Document as a whole emphasis P. 895 Lessons for Phillips v AWH? – Dictionaries vs. specification

29. Holding “Interpretation... Is an issue for the judge...” p. 896

30. What Hath Markman Wrought? Crucial importance of the “Markman Hearing” – Claim interpretation 1 st ; frames entire case Judges are reversed at least as often as juries on claim construction!

31. 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.

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

33. 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.

34. 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)

35. Return to Phillips “[I]s 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

36. Mayer and Newman, dissenting [T]here 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

37. In the wake of Markman Special Procedures: e.g., ND Cal local rules 2 appeals often necessary – see Liebel- Flarsheim, book p. 822 – 1 st appeal: claim interpretation of “jacket” – 2 nd appeal: claim lacks enablement

38. Wavetronix LLC v. EIS Electronic Integrated Systems, 573 F.3d 1343 (Fed Cir 2009) Claim interpretation in action: claim to a traffic monitoring device

39. Wavetronix Patent No. 6,556,916

40. ‘916 Patent The patent in suit is directed to a method of performing the initial step of “teaching” a monitoring device the location of the traffic lanes on a given thoroughfare using detection and observation of actual automobile traffic.

41. 1. In a traffic monitoring system having a sensor, a method for defining traffic lanes, comprising the steps of: a. for a selectable plurality of vehicles, i. detecting each of said selectable plurality of vehicles present within a field of view of said sensor; ii. estimating a position of said each of said selectable plurality of vehicles;

42. Method for defining lanes comprising...: iii. recording said position of said each of said selectable plurality of vehicles; b. generating a probability density function estimation from each of said position of said each of said selectable plurality of vehicles; and c. defining said traffic lanes within said traffic monitoring system from said probability density function estimation.

44. Accused Product from EIS

45. District Court Summary Judgment granted for defendant: no infringement of claim 1

46. 577 F.3d at 1354 “Infringement analysis involves a two-step process: the court first determines the meaning of disputed claim terms and then compares the accused device to the claims as construed.”

47. Key term in claim 1 “Probability density function estimation” Probability density function (PDF) is a well- known mathematical term BUT: “estimation” means we must look to the spec here

48. 573 at 1356 “We conclude... that the salient difference between the two concepts is that a PDF is a mathematical function, whereas a PDFE is an approximation of such a function using actual finite data.”

49. [I]n light of the teachings of the specification and the recitation of the PDFE within the claim language, for the purposes of claim 1 a PDFE must estimate a PDF with sufficient precision to indicate both where vehicles are located and where they are not. In other words, as the specification teaches, a PDFE should at a minimum provide enough data to ascertain “peaks” and “valleys” approximating the centers and boundaries of traffic lanes, respectively. – Id.

50. [A]s we understand Wavetonix's argument, any histogram that allows for an estimation of lane boundaries is a PDFE, because any graph that accurately allows for lane detection must have some correlation with the number or probability of cars in each lane. Wavetronix argues that the definition that most aligns with the specification and includes all of the disclosed embodiments is “a tabulation of frequencies of vehicle positions.”

51. Clues in the spec? The specification refers variously to: a PDF “as estimated,” ′ 916 patent col.6 l.6; using a PDF “to estimate” lane boundaries, id. col.6 ll.14-15; “PDF estimation,” id. col.6 l.32; a “PDF estimator,” id. col.6 l.33; and “estimated PDFs”....

52. Court agreed with EIS Continuous function; values over a range; peaks and valleys “The court therefore construes a PDFE to be ‘a finite data set large enough to approximate a function of a continuous variable whose integral over a region gives the probability that a random variable falls within the region.’” – 573 F.3d at 1358

53. 573 F.3d at 1359 [B]ecause the EIS system uses bins that are the full width of normal traffic lanes, the data collected in the NAMP array is simply too coarse to reveal any “peaks” representing lane centers or any “valleys” representing lane boundaries. EIS argues that its system actually employs a much simpler methodology that identifies traffic lanes by applying a common threshold value to the NAMP data.

54. “There is only one value per lane; therefore, both the “peak” and the “valley” represent whole lanes, rather than lane centers or boundaries. This illustrates that the data set produced in the NAMP array is too coarse to be a PDFE in the sense required by the ′916 patent.”