The claims define the metes and bounds of patent protection afforded under a patent. The claims can be drafted in many different ways. For example, the claims can recite a method, an apparatus or a product by process. A method claim recites various steps which if performed would infringe the patent. An apparatus claim recites various structures or elements of the apparatus which if made, offered for sale, used by another or imported would infringe the patent. A product by process claim attempts to define the product by process by which it is made.
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.
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