Patent claims interpreting

Definiteness. Adequate description or definiteness requites that the patent claims provide an outline of those elements which are integral to the appHcation s invention. In turn, the specification acts as a dictionary wherein the reader can interpret and understand the elements in the patent claims. Complementary to the requirement of definiteness is the requirement that the appHcation must disclose the entire invention. The appHcant cannot make a claim of right to the invention where essential elements of the invention are not disclosed in the patent. 

Before diving into claim interpretation, let s first review some basic aspects of claims, such as the types of claims, the structure of claims, universal claim transitions, and finally, Markush claiming in chemical patents. 

A patent must end with one or more patent claims which describe the patented subject matter as unambiguously as possible. Patent claims may be considered as the definition of the patent scope for legal purposes. The precedent patent description has to justify all aspects of the patent claims and will be used for this purpose during the examination process. But only in cases of doubt will details of the patent description be used later on to interpret the patent claims. Thus, patent claims must be formulated with the utmost care. The three basic requirements novelty, non-obviousness and utility have to apply to... 

To define literal infringement, the plain language of the patent claims must first be properly interpreted. This is accomplished by consideration of the ordinary meaning of the language of the claim, the patent... 

Further, a composition, device, or process cannot infringe a patent under the doctrine of equivalents where the broader interpretation of the patent claims necessary to cover the accused device or process would also cover "prior art" (i.e., the state of the technology before the filing of the patent application) (190). 

If you are on the plaintiff side, you analyze the language of the claims as interpreted by the specification (the main part of the patent). The judge may define the meaning of the claims. You examine and test the accused device to determine whether it is covered by the claims. If so, you write an opinion that the accused device infringes the patent claims. Infringement may be literal the words in the claim may describe the device. The infringement may be under the doctrine of equivalents if the accused device or process performs substantially the same function, and operates in substantially the same way to achieve substantially the same... 

Prosecution history estoppel requires that claims of a patent be interpreted in hght of proceedings in patent office during the prosecution process,... 

The story of the 331 patent is complex. It claims priority back to an original application filed in 1993, seven years before its issuance. The majority of the claims in the patent cover taxol substantially free of cremophor, the solvent used for dissolving and administering the FDA-approved version of taxol. Hence, these claims do not cover the approved version of taxol and caimot support listing. However, a small number of broad claims recite a vessel containing a specified amount of a taxol ranging from 33 mg to 3000 mg. These claims arguably cover, for instance, a bag for intravenous administration of taxol as approved by the FDA, but a district court has also invalidated the claims based on this interpretation. ... 

One district court explicitly has held that a brand-name company may not list a metabolite patent in the Orange Book, because the metabolite patent does not claim the drug, as required by the listing statute. " The court looked to the precedent, Hoechst-Roussel Pharms., Inc. v. Lehman, which interpreted the term claims in the Patent Term Restoration portion of the Hatch-Waxman Amendments at 35 U.S.C. 156(a) and concluded that a metabolite patent does not claim the approved dmg product. 

This begs the question of what effect the transition comprising has in this example. We have already seen that we cannot read the claim to allow addition to structural formula I itself. However, the preamble to the claim clearly explains that a pharmaceutical composition is being claimed and not merely a compound. We do not need to get into the exact nature of any claim construction limitations that this preamble might introduce to appreciate that this claim is not limited in scope to the compound of formula I and at least one pharmaceutically acceptable excipient, but would also cover the addition of materials that might be understood to go into a pharmaceutical composition. If the preamble is understood to be a limitation of the claim, then the claim can be read to be broad enough to capture the compound in a pharmaceutical composition but not so broad as to capture the compound in any possible setting, to ensure this interpretation, the patent drafter has carefully added an additional required element, the pharmaceutically acceptable excipient.19... 

Before following the fortunes of the parties litigant in the Court of Appeals, let us consider a rather fundamental question which concerns patents and their interpretation. In arriving at its decision, the court considered the two fundamental questions which are present in every patent suit, unless one of them is conceded or waived by the defendant. These are (1) Is the patent valid, and (2) if valid, is it infringed As you will infer, the court decided both questions in the affirmative, although some claims were held to be invalid. 

In summary, patents, creations of statutes, are subject to human frailties in preparation, prosecution, and interpretation. Some cases cannot be reconciled and some, which while once good law, are out of date. For the chemist who has developed a new use for an old compound, the first step should be to ascertain if there is some change in form, purity, carrier, or other feature which can distinguish the product from that which was old. In other words, if the two products were put in two bottles, side by side, would there be a difference, and is that difference important If not, protection may be obtainable by process claims under 35 USC 100 (SI) and direct or contributory infringement under 35 USC 271 (54). 

The "Doctrine of Equivalents" applies to the interpretation of claims to establish infringement of existing patent rights in those cases where there is no literal infringement. Anything that comes under the definition of equivalents would have been patentable at the priority date (and should be included in the claims). Thus the Doctrine cannot be used as an argument to negotiate broader claims for a patent at the time of application or prosecution (Kushan, 1992). 

The prior art limits the degree to which the claims may be interpreted because the claimed invention cannot be interpreted so broadly under the doctrine of equivalents as to encompass products that were known before the patent owner invented the claimed product. In other words, the claims may not be interpreted as broadly under the doctrine of equivalents as to read on the prior art. 

The doctrine of prosecution history estoppel also limits the degree to which the claims may be interpreted under the doctrine of equivalents. The doctrine of prosecution history estoppel precludes the patent owner from interpreting the claims in a manner that would encompass, within the claim, subject matter that the patent owner surrendered during prosecution of the patent application to achieve issuance of the patent. Any subject matter that the patent owner surrendered during prosecution to obtain allowance of claims made in the application of the patent cannot be reclaimed under the doctrine of equivalents. 

To illustrate, let us assume that a searcher reads that a chemical compoimd has a certain effect on a chromium catalyst. He cannot vouch for the scientific validity of this. However, he can say, assuming the statement to be true, that it has considerable, some, or little bearing on the search objectives. If his task is to locate information pertinent to patent validity, he may say, "This information may anticipate claim 5, U.S. patent. . . . Lawyers later may agree or disagree with his statement, but it has called their attention to the possible usefulness of the reference. Such highlighting is what is meant by saying the search abstract should be interpretive relative to the search objectives. 

---