8. Claim Construction and Infringement
Learning Objectives: Unit 8
Upon completion of unit 8, you should be able to:
- Explain the concept of direct infringement.
- Explain the processes and methods for construing claim terms.
- Analyze a hypothetical claim term.
35 U.S.C. § 271(a) states that
“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.
The “patented invention” is understood to be the “claimed invention.” Thus, patent infringement consists of making, using offering to sell, selling or importing the claimed invention.
Infringement
Determinations of whether a patent is infringed involve two basic questions: was a prohibited act performed and did it involve the claimed invention?
Although there can be disagreements over whether a prohibited act was performed (particularly when the claimed invention involves a method rather than a product), most infringement disputes involve the issue of whether the claimed invention was involved. Answering this question involves a comparison between the accused product or method and the relevant patent claim. If all of the limitations of the claim are met by an accused product or method, the claim is deemed to be literally infringed.
This comparison is easier said than done, however. Infringement analyses, like novelty analyses, involve a limitation-by-limitation approach rather than a holistic comparison. Think of the limitations in a claim as stars in a constellation. The question is whether each of the stars is present in an accused product. Just as different people might see different pictures in the stars, differences in other aspects between the accused product and the embodiment shown in the patent are irrelevant. Put another way, infringement and novelty analyses involve looking at the parts rather than at the whole.
Infringement litigation is typically filed in a US District Court, but infringement disputes can be heard in other courts such as the Court of Federal Claims or the Court of International Trade. Decisions made with respect to patent infringement are appealed to the Court of Appeals for the Federal Circuit, and possibly later to the Supreme Court.
Claim Construction
In addition, as you likely have already noticed, most claims are not particularly easy to read. Nor are the words necessarily ones with only a singular meaning. Language is imprecise, and since claims are written in English, they can exhibit all the ambiguities and uncertainties our language contains. Just as statutes and contracts can be subjected to multiple interpretations, so to can patent claims.
Sometimes there are claim terms that must be interpreted so that the meaning can be properly understood by the fact finder. The process of interpreting the words of a patent claim and then giving those interpretations legal meaning is known as claim construction. Because many patent disputes can turn on the meaning of a particular term in the claim, numerous opinions have been written that construe those terms. Claim construction is only done in the context of a dispute, such as infringement litigation or validity challenges, because there is no need to construe a claim in the abstract.
More recently, questions have been raised involving the issue of who gets to construe claim terms and what form of appellate review is appropriate. The Supreme Court recently addressed this issue in Teva v. Sandoz (2015), a case I will discuss in class.
Begin by reading 35 U.S.C. § 271(a) for yourself. Next, read Phillips v. AWH.
35 U.S.C. §271. Infringement of patent (2010)
a) 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.
b) Whoever actively induces infringement of a patent shall be liable as an infringer.
c) Whoever offers to sell or sells within the United States or imports into the United States a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer.
