美国专利诉讼代表性案例解析_Claim Construe & Literal Infringement_98-2
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Specification
• Technical Field • Background Art • Disclosure of the Invention • Brief Description of the Drawings
7
Phillips v. AWH Corp.
The Patent:
Claims
8
Phillips v. AWH Corp.
Facts (cont’d):
Claim 1 of the „798 patent is representative of the asserted claims with respect to the use of the term “baffles.” It recites: 1. Building modules adapted to fit together for construction of fire, sound and impact resistant security barriers and rooms for use in securing records and persons, comprising in combination, an outer shell ..., sealant means ... and further means disposed inside the shell for increasing its load bearing capacity comprising internal steel baffles extending inwardly from the steel shell walls.
4
Phillips v. AWH Corp.
The Patent:
Specification
• Title • Abstract
Байду номын сангаас
5
Phillips v. AWH Corp.
The Patent:
Specification
• Drawings
6
Phillips v. AWH Corp.
The Patent:
Issue:
Whether the claim term “baffles” excludes structures that extend at a 90 degree angle from the walls?
Holding
No. “Baffles” were not limited to non-perpendicular, projectile-deflecting structures disclosed in preferred embodiment.
Court: U.S. Court of Appeals, Federal Circuit Year: 2005 Citation: 415 F.3d 1303 Appealed from the U.S. District Court for the District of Colorado On rehearing en banc, Bryson J. delivered the opinion of the court.
13
Phillips v. AWH Corp.
Rationale (cont‟d)
Texas Digital suggested a methodology for claim interpretation in which the specification should be consulted only after a determination is made. Even then, recourse to the specification is limited to determining whether the specification excludes one of the meanings derived from the dictionary. The main problem with elevating the dictionary to such prominence is that it focuses the inquiry on the abstract meaning of words rather than on the meaning of claim terms within the context of the patent.
11
Phillips v. AWH Corp.
Rationale (cont‟d)
The Patent and Trademark Office ("PTO") determines the scope of claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction "in light of the specification as it would be interpreted by one of ordinary skill in the art." While extrinsic evidence "can shed useful light on the relevant art," the court has explained that it is "less significant than the intrinsic record in determining 'the legally operative meaning of claim language. Because dictionaries, and especially technical dictionaries, endeavor to collect the accepted meanings of terms used in various fields of science and technology, those resources have been properly recognized as among the many tools that can assist the court in determining the meaning of particular terminology to those of skill in the art of the invention.
3
Phillips v. AWH Corp.
Facts:
Phillips invented modular, steel-shell panels that can be welded together to form load-bearing and impact-resistant walls. He entered into an arrangement with AWH to market and sell the panels. After the arrangement ended, Mr. Phillips received a sales brochure from AWH that suggested to him that AWH was continuing to use his trade secrets and patented technology without his consent.
12
Phillips v. AWH Corp.
Rationale (cont‟d)
The Court has viewed extrinsic evidence in general as less reliable than the patent and its prosecution history in determining how to read claim terms. They do not share the above features of intrinsic evidence. Extrinsic publications may not be written by or for skilled artisans. Besides, there is a virtually unbounded universe of potential extrinsic evidence of some marginal relevance that could be brought to bear on any claim construction question. Although the concern expressed by the court in Texas Digital was valid, the methodology it adopted placed too much reliance on extrinsic sources.
9
Phillips v. AWH Corp.
Procedural History
After claim construction, Phillips conceded he could not prove infringement under the district court‟s claim construction. The district court granted the defendants motion for summary judgment of noninfringement. A panel of the CAFC affirmed.
Engel Industries, Inc. v. Lockformer Co. (1996)
2
Phillips v. AWH Corp.
Caption
Parties
• Plaintiff-Appellant: Edward H. PHILLIPS • Defendants-Cross Appellants : AWH CORP.
美國專利訴訟代表性案例解析
Claim Construction & Literal Infringement
王立達
交通大學科技法律所/June 2010
Outlines
Claim Construction
Phillips v. AWH Corp. (2005)
Literal Infringement
10
Phillips v. AWH Corp.
Rationale
The ordinary meaning of a term must be considered in view of the intrinsic evidence: the claims, the specification, and the prosecution history. A claim term will not carry its ordinary meaning if the intrinsic evidence shows that the patentee distinguished that term from prior art on the basis of a particular embodiment, expressly disclaimed subject matter, or described a particular embodiment as important to the invention. In light of the statutory directive of 35 U.S.C. Sec. 112 that that the specification describe the claimed invention in "full, clear, concise, and exact terms." the specification necessarily informs the proper construction of the claims.
• Technical Field • Background Art • Disclosure of the Invention • Brief Description of the Drawings
7
Phillips v. AWH Corp.
The Patent:
Claims
8
Phillips v. AWH Corp.
Facts (cont’d):
Claim 1 of the „798 patent is representative of the asserted claims with respect to the use of the term “baffles.” It recites: 1. Building modules adapted to fit together for construction of fire, sound and impact resistant security barriers and rooms for use in securing records and persons, comprising in combination, an outer shell ..., sealant means ... and further means disposed inside the shell for increasing its load bearing capacity comprising internal steel baffles extending inwardly from the steel shell walls.
4
Phillips v. AWH Corp.
The Patent:
Specification
• Title • Abstract
Байду номын сангаас
5
Phillips v. AWH Corp.
The Patent:
Specification
• Drawings
6
Phillips v. AWH Corp.
The Patent:
Issue:
Whether the claim term “baffles” excludes structures that extend at a 90 degree angle from the walls?
Holding
No. “Baffles” were not limited to non-perpendicular, projectile-deflecting structures disclosed in preferred embodiment.
Court: U.S. Court of Appeals, Federal Circuit Year: 2005 Citation: 415 F.3d 1303 Appealed from the U.S. District Court for the District of Colorado On rehearing en banc, Bryson J. delivered the opinion of the court.
13
Phillips v. AWH Corp.
Rationale (cont‟d)
Texas Digital suggested a methodology for claim interpretation in which the specification should be consulted only after a determination is made. Even then, recourse to the specification is limited to determining whether the specification excludes one of the meanings derived from the dictionary. The main problem with elevating the dictionary to such prominence is that it focuses the inquiry on the abstract meaning of words rather than on the meaning of claim terms within the context of the patent.
11
Phillips v. AWH Corp.
Rationale (cont‟d)
The Patent and Trademark Office ("PTO") determines the scope of claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction "in light of the specification as it would be interpreted by one of ordinary skill in the art." While extrinsic evidence "can shed useful light on the relevant art," the court has explained that it is "less significant than the intrinsic record in determining 'the legally operative meaning of claim language. Because dictionaries, and especially technical dictionaries, endeavor to collect the accepted meanings of terms used in various fields of science and technology, those resources have been properly recognized as among the many tools that can assist the court in determining the meaning of particular terminology to those of skill in the art of the invention.
3
Phillips v. AWH Corp.
Facts:
Phillips invented modular, steel-shell panels that can be welded together to form load-bearing and impact-resistant walls. He entered into an arrangement with AWH to market and sell the panels. After the arrangement ended, Mr. Phillips received a sales brochure from AWH that suggested to him that AWH was continuing to use his trade secrets and patented technology without his consent.
12
Phillips v. AWH Corp.
Rationale (cont‟d)
The Court has viewed extrinsic evidence in general as less reliable than the patent and its prosecution history in determining how to read claim terms. They do not share the above features of intrinsic evidence. Extrinsic publications may not be written by or for skilled artisans. Besides, there is a virtually unbounded universe of potential extrinsic evidence of some marginal relevance that could be brought to bear on any claim construction question. Although the concern expressed by the court in Texas Digital was valid, the methodology it adopted placed too much reliance on extrinsic sources.
9
Phillips v. AWH Corp.
Procedural History
After claim construction, Phillips conceded he could not prove infringement under the district court‟s claim construction. The district court granted the defendants motion for summary judgment of noninfringement. A panel of the CAFC affirmed.
Engel Industries, Inc. v. Lockformer Co. (1996)
2
Phillips v. AWH Corp.
Caption
Parties
• Plaintiff-Appellant: Edward H. PHILLIPS • Defendants-Cross Appellants : AWH CORP.
美國專利訴訟代表性案例解析
Claim Construction & Literal Infringement
王立達
交通大學科技法律所/June 2010
Outlines
Claim Construction
Phillips v. AWH Corp. (2005)
Literal Infringement
10
Phillips v. AWH Corp.
Rationale
The ordinary meaning of a term must be considered in view of the intrinsic evidence: the claims, the specification, and the prosecution history. A claim term will not carry its ordinary meaning if the intrinsic evidence shows that the patentee distinguished that term from prior art on the basis of a particular embodiment, expressly disclaimed subject matter, or described a particular embodiment as important to the invention. In light of the statutory directive of 35 U.S.C. Sec. 112 that that the specification describe the claimed invention in "full, clear, concise, and exact terms." the specification necessarily informs the proper construction of the claims.