PATENT LAW

SESSION 5:
INFRINGEMENT IN GENERAL

PATENT LAW- Infringement in

general
OUTLINE
Statute: 35 USC 271
Purpose Of Claims
Interpretation by PTO
Examiners
Patent Trial and Appeal Board (PTAB)
Interpretation (construction) by courts Markman hearing
File Wrapper Estoppel

PATENT LAW- Infringement in

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STATUTE: 35 USC 271
whoever without authority
MAKES
USES,
OFFERS TO SELL
SELLS
IMPORTS
any patented invention, within the US or into the US
during the term of the patent therefor, infringes the
patent .

PATENT LAW- Infringement in

general
Purpose of Claims
Numbered paragraphs after the end of the
specification which particularly point out
and distinctly claim the subject matter which
the inventor regards as his invention. 35 USC
112 a.

PATENT LAW- Infringement in

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Purpose of Claims
Claims provide the concise formal definition
of the invention; the metes and bounds.
Claims are an inexact verbal portrayal of
the inventive concept that is arrived at during
the prosecution stage where the words are
often changed so as to be different
(unobvious) from the prior art.

PATENT LAW- Infringement in

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Interpretation by PTO
Examiner
The Examiner examines the patent application and
will do a prior art search. Usually he/she will reject the
claims (70%+) as being too broad so as to read on the
selected references. Examiner applies the broadest
possible interpretation of the claims
In this prosecution of the patent application the
applicant can then modify the claim language, traverse
the arguments of the Examiner or both.

PATENT LAW- Infringement in

general
Interpretation by PTO
PTAB
Under the 2013 America Invents Act (AIA), the
PTAB was constituted to examine issued patents.
Even though the patent has been granted, the PTAB
applies the broadest possible interpretation of the
claims This is much broader than the courts, but
the Fed. Cir. upheld this standard. It means that
with a broader interpretation there is a greater
chance that the claim will read on the prior art and
be invalid.

PATENT LAW- Infringement in

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Interpretation (construction) by
courts
Markman hearing
The court will construe the
meaning of the patent language, but
cannot change it.

PATENT LAW- Infringement in

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Interpretation (construction) by courts
Markman hearing
Intrinsic evaluation
Looks to the claim language itself;
to the specification;
to the file history

PATENT LAW- Infringement in

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Interpretation (construction) by courts
Markman hearing
Extrinsic evaluation
Looks to Expert testimony
Dictionaries
Treateses

PATENT LAW- Infringement in

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File Wrapper Estoppel
(file history estoppel)
A traditional type of extoppel where the affirmative
comments and/or acquesence by the applicant in trying
to get the patent can limit the coverage of the claims.
For example, if in order to differentiate over a
reference, you say a protective plate touches the body
of the container, then you cannot later argue that the
plate was spaced from the container.