In American Piledriver v. Geoquip and Bay Machinery, the patentee (Piledriver) sued two different entities (Geoquip and Bay Machinery) in two different venues or courts for patent infringement.  Both courts construed the patent claims but both Courts defined the same terms differently.  Nonetheless, both Courts came to the same conclusion that the defendants did not infringe Piledriver’s patent.  Hence, the difficulty in predicting the outcome of patent litigation.  Piledriver appealed.

In order to understand the holding of the case and possible strategies in writing patent applications, it is important to understand the patented technology, the claim language at issue and the design around employed by the defendants.

PATENTED TECHNOLOGY:

The invention relates to a vibratory pile driver.  Vibration and weight of the pile drive the piles into the ground.  The prior art utilized a pair of eccentrically weighted cylinders either intergral with the gear or connected to a gear.  The rotational axes of the eccentric weights are horizontally lined up and rotated in opposite directions to remove any horizontal movement caused by rotation of the cylinders.  Only the vertical movement is left.  It is easier to understand operation of the invention by reviewing Figures 1 and 3 below.

CLAIM LANGUAGE:

The claims required an eccentric weight portion.  Based on the consistent use of the terminology in the claims, the specification and the prosecution history, the court affirmed the definition of the term adopted by the Virginia court.  In particular, the Virginia Court defined the term “eccentric weight portion” to mean “that portion of the counterweight that extends forward or rearward from the front or back face of the gear portion such that it shifts the center of gravity radially outward from the gear’s rotational axis.” (emphasis added).  The eccentric weight portion is shown in Figure 3 above.

Design around:

The accused infringing device is shown below.  As can be seen, the weight which vibrates the gear is embedded within the gear itself.  The eccentric weight does not extend forward or rearward.

PATENT DRAFTING TIPS:

Based on this case, in drafting a patent application, the drafter should consider the alternative design arounds and include them into the patent application if possible.  Most reputable patent attorneys will include alternative embodiments.  A balanced approach must be employed since adding too many different embodiments may unreasonably increase the cost of the patent application.  However, if there is a purpose for adding various alternative embodiments exist, then they should be added.

The claim language also needs to be crafted so as to be broad enough to encompass those potential alternative design arounds.  This is sometimes hard to do since you are called upon to look into the future.  More importantly, even if the potential alternative design arounds are less optimal than the present invention, it may be beneficial to include the less desireable embodiment in the patent application.

I invite you to contact me with your patent questions at (949) 433-0900 or James@OCPatentLawyer.com. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.

The following case is an example of a claim which was not clear.  The claim language at issue was “a release means for retaining …”  Baran v. Medical Device Technologies, Inc., 2010-1058 (Fed. Cir. Aug. 12, 2010).  This is a term of art among patent attorneys known as a “means plus function” limitation.  The limitation appears broad so as to encompass any type of means for retaining.  However, Congress by statute has limited this type of claim language to encompass only the structure disclosed in the patent application and linked to the particular function recited in the means plus function limitation.

In Baran, it was unclear whether the function included only the retaining function or both the release and retaining functions.  The Court held that the claim was written in a way that the function included both the release and retaining functions.  This narrowed the claim as it now required the structure disclosed in the specification related to both releasing and retaining.  Based on this claim construction, the defendant did not infringe the claim.

By statute, if a patentee wants to make clear that they are utilizing the means plus function claim language, the patentee must use the “means” term then insert the function after the “means” term.  In this case, the patentee used the term “release” before the “means” term then followed up with the “retaining” function.  Unless there is a reason for doing so, the means plus function limitation should follow the basic format of “means” followed by a function.  Only one function should be identified at a time.

I invite you to contact me with your patent questions at (949) 433-0900 or James@OCPatentLawyer.com. Please feel free to forward this article to your friends. As an Irvine patent attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.

Claims may be written as: (1) an apparatus claim that recites various structural elements, (2) a method claim that recites various steps or (3) a product by process claim that define the product by the process by which the product is made. The issue with product by process claims is whether the steps are limitations in determining infringement or not.  In construing the scope of protection afforded under product by process claims, the Federal Circuit has previously held that “process terms in product-by-process claims serve as limitations in determining infringement.” Atlantic Thermoplastics Co. v. Faytex Corp., 970 F.2d 834 (Fed. Cir. 1992). Conversely, the Federal Circuit has also held that “the correct reading of product-by-process claims is that they are not limited to product prepared by the process set forth in the claims.” Scripps Clinic & Research Foundation v. Genentech, Inc. 927 F.2d 1565, 1583 (Fed. Cir. 1991). The holding in Scripps Clinic provides broader protection since products made by a different process would still infringe the product by process claim, whereas, the holding in Atlantic Thermoplastics would only protect products made by the process recited in the product by process claim.

The following case clarifies the conflict in law with respect to holdings in Atlantic Thermoplastic and Scripps Clinic. In Abbott Laboratories v. Sandoz, Inc. 2007-1400 (May 18, 2009 Fed. Cir.), the patent at issue contained claims directed to a crystal defined by a certain process for forming the crystal. After the Federal Circuit reviewed various case opinions rendered by the United States Supreme Court and other sister circuits in relation to product by process claims, the Federal Circuit held that product by process claims are limited by and defined by the recited process. The Federal Circuit narrowed the scope of patent protection afforded under product by process claims to only the process recited in the product by process claim. A product manufactured by a different process is not protected by the product by process claim.

Other posts related to claim interpretation is:

Avoiding Patent Infringement

Stopping Infringement

The Federal Circuit had two cases with opposite holdings relating to whether steps in the product by process claim are limitations or not in determining infringement. In Atlantic Thermoplastics Co. v. Faytex Corp. (Fed. Cir. 1992), the Federal Circuit held that “process terms in product-by-process claims serve as limitations in determining infringement.” (emphasis added). In contrast, in Scripps Clinic & Research Foundation v. Genentech, Inc. (Fed. Cir. 1991), the Federal Circuit held that product-by-process “are not limited to product prepared by the process set forth in the claims.” (emphasis added). In Abbott Laboratories v. Sandoz (Fed. Cir. 2009), the Federal Circuit clarified that the steps recited in a product by process claim serve as limitations in determining infringement.

The patent in suit relates to a drag reducing agents injected into oil and gas pipelines such that more liquid may be pumped more efficiently. The claim recited a process of preparing a drug reducing agent … a suspending material selected from the group consisting of water and water-alcohol mixtures, whereby a stable nonagglomerating suspension of the solid friction reducing agent is obtained. The alleged infringer added MIBK which is a common impurity in industrial alcohols in order to prevent a liquor tax from being applied. The Court held that impurities that a person of ordinary skill in the relevant art would ordinarily associate with a component on the “consisting of” list do not exclude the accused product or process from infringement. In footnote 5 of the opinion, the court specifically stated that the added component must be related to the invention to avoid infringement (Norian) but specifically reserved the issue of whether impurities not normally associated with a component would exclude the accused process from infringement.

In summary, if the added component is not related to the invention such as in the Norian Case where a spatula was added to a chemical kit consisting of a specific list of chemicals, then infringement is not avoided. If the added component is related to the invention and is normally associated with a component on the “consisting of” list, then infrigement is still not avoided. However, the Court appears to have specifically reserved the question of whether a component related to the invention but not normally associated with a component on the “consisting of” list would avoid infringement.