One of the most important sections of a patent specification is the claims. The reason is that the claims define the metes and bounds of patent protection afforded under the patent. For example, the scope of patent protection afforded under a product claim that recites elements a, b and c extends only to a product containing elements a, b and c. If one of the elements is missing from a competitor’s product, then there is no infringement. The competitor’s product is outside the scope of protection afforded under the patent.
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.
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