What are the Parts of a Patent? Claim Construction. Infringement. Invalidity. Design.

1. June 26, 20181
Patent Infringement And Validity Analysis
Bradley Thorson
August 22, 2011
What are the Parts of a Patent
Claim Construction
Infringement
Invalidity
Design

2. SM
© 2010 Patterson Thuente Christensen Pedersen, P.A., some rights reserved - www.ptslaw.com
DISCLAIMER: This presentation and any information contained herein is intended for informational purposes only and should not be construed as legal
advice. Seek competent legal counsel for advice on any legal matter.
Patent Infringement And
Validity Analysis
Bradley J. Thorson
Shareholder

3. Topics
Patent Basics
Claim Construction
Infringement Analysis
Validity Analysis
Design Patents
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4. What are the Parts of a Patent?
Cover Page
Drawings
Specification
Claims (define scope)

5. What are the Parts of a Patent?
Cover Page
Bibliographic Data
• (note filing date)
Abstract
• (does NOT define
scope)
Sample drawing

6. What are the Parts of a Patent?
Drawings

7. What are the Parts of a Patent?
■ Specification
Background
Summary of Invention
Detailed Description

8. What are the Parts of a Patent?
Claims (define invention)

9. Claim Construction
Claims of a patent are what defines the patented invention.
First step in determining infringement or validity of a patent is always
interpreting the claims.
Since claim interpretation will normally control the remainder of the decisional
process, “[a]nalysis begins with a key legal question - what is the invention
claimed?” Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567 (Fed.
Cir. 1987))
“The name of the game is the claim.”
In re Hiniker Co., 150 F.3d 1362, 1369 (Fed.Cir.1998).
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10. Claim Construction
Parts of a claim
Preamble
Transitional phrase
Body
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11. Claim Construction
Preamble
Initial part of the claim that sets the context for the invention
Generally not limiting (with certain exceptions)
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1. A window assembly . . .

12. Claim Construction
Transitional Phrase
“comprising”
• Means at least the following items as listed in the body of the claim, possibly with the
addition of other things not listed.
• By far the most common, because it is the broadest.
“consisting of”
• Means the following items as listed in the body of the claim, no more and no less.
• Very narrow - rarely used.
“consisting essentially of”
• Means “substantially the following items” with some possible variations.
• Normally used only for chemical and pharmaceutical inventions.
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13. Claim Construction
Transitional Phrase
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1. . . . comprising . . .

14. Claim Construction
Body
Defines at a minimum
what the invention includes
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15. Claim Construction
Dependent claims
Include everything in the claims they refer to, in addition to what is recited.
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16. Claim Construction
Basic rules for interpreting the words of the claim:
The starting point for claim construction is always determining the
“ordinary meaning” of the terms.
If a term is explicitly defined in the specification, that definition governs.
Otherwise, terms mean what one of ordinary skill in the relevant art would
interpret them to mean, in the context of how they are used in the
specification and claims.
The specification is “the single best guide” to determining the meaning of
words used in the claim.
But . . . must take care not to “read in” the specifics of what is described in
the specification and drawings if not included in the claims.
Dictionaries, other patents, reference books, expert testimony, etc. can be
used only if the specification does not provide enough clarity as to what
terms mean.
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17. Infringement
U.S. Patent No. 6,123,456
to Green et al.
Accused Device

18. Infringement
compare your product to other’s claimThe product is compared to the properly construed
claims.
A claim is infringed only if each and every limitation listed
in the claim is found in the accused device.

19. Infringement
compare your product to other’s claimA claim that reads:
A device, comprising:
A;
B; and
C.
Is infringed by a device including A, B, C, and D
but is not infringed by a device including only A, B, and D.

20. Patentability –
compare your claims to prior art
Infringement
U.S. Patent No. 5,123,456
to Green et al.
1. A writing instrument, comprising:
a hollow wooden shaft; and
a graphite core disposed in the shaft,
with an end protruding from an end of
the shaft.
Accused Product:
Does not matter
that the accused
device also
includes a ferrule
and an eraser.

21. Patentability –
compare your claims to prior art
Infringement
U.S. Patent No. 5,123,456
to Green et al.
1. A writing instrument, comprising:
a hollow wooden shaft; and
a graphite core disposed in the shaft,
with an end protruding from an end of
the shaft.
Accused Product:
If the shaft of the
accused product is
plastic, or the core is
not “graphite,” then no
infringement.

22. Patentability –
compare your claims to prior art
Infringement – Importance of Claim Construction
U.S. Patent No. 5,123,456
to Green et al.
1. A writing instrument, comprising:
a hollow wooden shaft; and
a graphite core disposed in the
shaft, with an end protruding from
an end of the shaft.
If the specification specifically defines
“graphite” as “a carbon compound
containing not less than 95% carbon,”
then a product with a core of only 85%
carbon will not infringe.
If the specification does not define
“graphite,” then it means what one of
ordinary skill in the art would think it
means.
Without a specific definition, even if the
specification only describes cores with
95% carbon content, that does not allow
the claim to be read as only covering
cores with 95% carbon content.

23. Patentability –
compare your claims to prior art
A claimed invention is patentable if:
The claimed invention is not disclosed exactly in every detail
in the “prior art.” (Novel)
The claimed invention is not obvious in view of the “prior
art.” (Non-obvious)
The claimed invention is described in the specification of the
patent in sufficient detail as to enable one of ordinary skill in
the art to make and use the invention. (Description and
enablement)
The claims clearly and distinctly define the claimed invention
(Definiteness).
Invalidity

24. Patentability –
compare your claims to prior art
Even if a patent has been issued by the USPTO, the claims of
the patent can be “invalid” if it is later shown that they do not
meet the requirements for patentability.
For example, if a “prior art” document is later found that
discloses every limitation of a claim, then the claim is invalid.
But . . . U.S. Patents are presumed valid. 35 U.S.C. § 282.
So, after a patent is issued, patent claims can be invalidated
only upon “clear and convincing evidence” that the claim is
invalid.
Invalidity

25. Patentability –
compare your claims to prior art
What is “prior art?”
35 U.S.C. § 102 Conditions for patentability; novelty and
loss of right to patent.
• A person shall be entitled to a patent unless –
• (a) the invention was known or used by others in this
country, or patented or described in a printed
publication in this or a foreign country, before the
invention thereof by the applicant for patent, or
• (b) the invention was patented or described in a
printed publication in this or a foreign country or in
public use or on sale in this country, more than one
year prior to the date of the application for patent in the
United States . . .
Invalidity

26. Patentability –
compare your claims to prior art
Anticipation
If a single prior art document or publicly disclosed device or
process discloses every limitation of a claim, then the claim
is “anticipated” and is invalid.
Must be able to prove the document or public disclosure
actually is “prior” to the invention.
Proof must be “clear and convincing.”
Witness testimony generally is not enough – must have
some other corroborating evidence.
Invalidity

27. Invalidity - Anticipation
U.S. Patent No. 123,456
to Smith (1850)
U.S. Patent No. 6,123,456
to Yellow et al. (1990)
1. A writing instrument,
comprising:
a hollow wooden
shaft; and
a graphite core
disposed in the
shaft, with an end
protruding from an
end of the shaft.

28. Patentability –
compare your claims to prior art
Obviousness
35 U.S.C. 103 Conditions for patentability; non-obvious subject matter.
• (a) A patent may not be obtained though the invention is not identically
disclosed or described as set forth in section 102 of this title, if the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains. Patentability shall not be negatived by the manner in
which the invention was made.
Subject matter does not need to be disclosed in a single
prior art reference – two or more references can be
combined.
But . . . there must be a logical reason that one of ordinary
skill would have combined the references.
Invalidity

29. Invalidity - Obviousness
U.S. Patent No. 123,456
to Smith (1850)
U.S. Patent No. 6,123,456
to Yellow et al. (1990)
1. A writing instrument,
comprising:
a hollow wooden shaft;
a graphite core disposed in the
shaft, with an end protruding
from an end of the shaft; and
an eraser attached to an
opposite end of the shaft.
U.S. Patent No. 456,789
to Jones(1890)
Need logical reason that one of
ordinary skill would have
combined the teachings.

30. Designs
Granted on ornamental design of a
functional object
Claim of a design patent is actually
the drawings.
In other words, a design patent
covers only what is shown in the
figures.
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31. Designs
Portions shown in solid lines are
claimed and must be considered in
determining infringement.
Portions shown in “dashed lines”
are not claimed, and often just
serve to show the environment in
which the claimed product is used.
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32. Design Patent Infringement
“[I]f, in the eye of an ordinary observer, giving such attention as a
purchaser usually gives, two designs are substantially the same,
if the resemblance is such as to deceive such an observer,
inducing him to purchase one supposing it to be the other, the
first one patented is infringed by the other.”
Gorham Co. v. White, 81 U.S. 511, 528 (1871).
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33. Design Patent Infringement
Infringement is determined by comparing the figures of the patent to the accused
product.
If an “ordinary observer” would take the accused product for what is depicted in the
figures, there is infringement.
Identity of the “ordinary observer” is critical
Harder to show infringement if the buyer of the product is sophisticated, and can
be expected to notice small differences.
A second step of the analysis requires comparison of both the figures of the patent
and the accused device to the closest prior art.
If the accused device appears to be closer to the prior art than the figures of the
patent, there may not be infringement.
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34. Thank You
Bradley J. Thorson, Esq.
Patterson Thuente Christensen Pedersen P.A.
4800 IDS Center, 80 South Eighth Street
Minneapolis, MN 55402
thorson@ptslaw.com
612.349.5756
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