Patent It Yourself - PDF Archive

ChaPter 15 | After Your PATENT ISSUES: Use, MAINTENANCE, and INFRINGEMENT | 431
is akin to rearranging the deck chairs on the Titanic—the
orchestra is playing as if nothing is amiss, but the ship is
heading for Davy Jones’ locker.”
In the Phillips case the court revised the rules for
determining the meaning of terms in a claim as follows. To
interpret the meaning of a crucial term in a claim, use the
following procedure:
1. As a baseline, determine the meaning of the term to
a person with ordinary skill in the art; other sources
can be referred to for this.
2. See if the context of the term in its claim and other
claims sheds light on the term’s meaning. That is, if
the term is used broadly in an independent claim,
such as “a baffle” and a dependent claim states that
the baffle is inclined, this indicates that the baffle
should not be interpreted as being inclined in the
independent claim.
3. Refer to the specification to interpret the term. If the
specification defines the term, this is controlling.
4. Look at the prosecution history; this can be useful
but less so than the preceding factors.
5. Lastly, refer to extrinsic evidence, such as dictionaries,
treatises, and testimony of experts. Less reliance
should be placed on extrinsic evidence than in the
past. The limitations in the specification should
generally not be imported into the claims. For
example, if the specification shows a baffle that is
inclined and the claim simply recites a baffle, the
baffle should not be limited to inclined baffles.
6. If a claim is ambiguous, it should be construed in a
manner that sustains its validity. If a claim recites a
means which includes some hardware—for example,
“means comprising a baffle”—the means clause is not
restricted to the part described in the specification
and its equivalents and should be interpreted more
broadly.
N. Using the Reexamination
Process to Reduce the Expense
of Patent Infringement Suits
Despite the sad situation at the CAFC, a positive and
valuable statutory change has been the reexamination
process (35 USC 302) in which the PTO can be asked to
reexamine any in-force patent to determine whether prior
art newly called to its attention knocks out one or more of
the patent’s claims. How does this help the patent holder?
Suppose the patent holder decides to go after an infringer.
Very soon after the first letter is sent, or suit is filed, the
infringer will likely make a search and tell the patent holder
of prior art that the infringer feels invalidates one or more
claims in the patent. Formerly, if it still thought its patent
was valid, the patent holder had to push ahead with an
expensive patent infringement lawsuit and hope that the
U.S. District Court judge (who is often unfamiliar with
patent principles) would decide its way instead of for the
infringer.
Now, instead of leaving the matter up to the judge,
anyone can request a reexamination by the PTO. The
party requesting the reexamination can participate in
the reexamination process, and has the right to appeal
any decision in favor of the patentee. The PTO will
reexamine the claims in light of the prior art and either
issue a certificate of patentability, or unpatentability
A reexamination is better for an infringer than for a
patentee because the standard to prove patent invalidity
is a preponderance of the evidence, while in litigation
invalidity must be proven by clear and convincing evidence.
In the case of the former, this opinion will weigh almost
conclusively in favor of the patent holder in any ensuing
litigation and quite often will lead to a favorable settlement
beforehand. In the event the latter occurs (certificate of
unpatentability), the unpatentable claims will be canceled
automatically by the PTO. While this will not result in
victory for the patent holder, it will save time and money
that otherwise would have been spent haggling in court.
The reexamination process can also be used to your
advantage if you’re accused of infringement. By obtaining
a PTO certification that the patent holder’s claims are
unpatentable over the prior art, you may save yourself an
expensive defense in court.
To institute a reexamination of any patent, anyone can
file a request, together with the patent number, prior art,
and the fee. (See Fee Schedule.) The fee appears huge, but
is small compared with the expense of litigation. If the
PTO feels that the prior art is relevant, it will conduct the
reexamination. The reexamination can be conducted ex
parte (only the requester can file briefs) or inter partes (both
sides can file a brief setting forth their arguments). If the
PTO feels the newly cited art isn’t relevant, it will terminate
the proceeding and refund a large part of the fee.
O. Jury Trials
Most juries love individual patent holders and have
awarded very large damages in patent infringement actions,
especially where an individual patent holder has sued a
large corporation. Thus, if you sue on a patent, always
demand a jury trial: most juries usually award more than
a judge will. Be aware, however, that the Supreme Court