Although a patent is presumed valid, the burden is upon the patent owner to prove infringement by a preponderance of the evidence. To establish literal infringement, every limitation set forth in the claims must be exactly found in the accused device. Hearings on claim interpretation, just now in the evolutionary stages, are generally called Markman hearings. See Markman v. Westview Instruments, Inc., 116 S.Ct. 1384 (1996).
A variety of procedural methods may be used for presenting Markman hearings to the court: a motion to construe, a ruling or a motion in limine, a pre-trial order or a complete set of local patent rules specifically dealing with procedure for Markman hearings. The U.S. District Court for the Northern California is currently developing such local rules.
Some district courts hold plenary Markman hearings or trials to receive expert testimony and other extrinsic evidence. See, e.g., Loral Fairchild Corp. v. Victor Co. of Japan Ltd., 906 F. Supp. 798, 803 (E.D.N.Y. 1995); Elf Atochem North America Inc. v. Libby-Owens Ford Co., 894 F. Supp. 844, 859 (D. Del. 1995). The district courts have broad authority and discretion to determine the applicable procedure for the Markman hearing. No matter what procedures are ultimately decided upon to determine if there has been infringement, the district court must still interpret the claims as a matter of law. The trier of fact must then judge whether each element of the claim, as construed by the court, is present in the accused device. Patents consists of drawings that provide a diagrammatic description of the invention along with a specification supplying a written description of the invention detailed enough that a person of ordinary skill in the art is "enabled" or taught how to make or use the invention. 35 U.S.C. Section 112. The drawings and specification must set forth at least one specific embodiment of the invention that is the best mode for carrying out the invention the inventor contemplated at the time of filing.
The specification must include one or more claims particularly pointing out the subject matter that the applicant claims in the invention. The drawings must show each claim element. If neither the drawings nor the specification disclose all claim elements, the patent is defective. The claims are significant since they particularly define the scope of the invention protected by the patent. If each claim element appears in prior art, then the claim is said to "read" upon the prior art, rendering the claim invalid or unpatentable. If a claim element is not present in the prior art, then the claim does not literally read upon the prior art and the prior art does not anticipate the claim.
Where each element is present in an alleged infringing device, then the patent reads on the device and there is literal infringement. Where the equivalent of an element exists in the alleged infringing device, there may exist infringement by equivalents. See Smithkline Diagnostics Inc. v. Helena Laboratories Corp., 859 F.2nd 878,889 (Fed. Cir. 1988); Hilton Davis Chemical Co. v. Warner-Jenkinson Co. Inc., 62 F.3d 1512, 1518 (Fed. Cir. 1995).
If one or more claim elements are not found in an alleged infringing device, there is no literal infringement of the claim. The claim must read upon the disclosure in its own patent. In which case, the claim is said to be "supported" by its disclosure.
To determine the patented invention's scope, the court must first interpret and construe a claim in view of other words in that claim, other claims in the patent and the drawings and specification. Generally, the words of the claim are given their ordinary and customary meaning. The inventor, however, may choose to be his own "lexicographer" and create special definitions of words and phrases as long as the definitions are clearly stated in the specification or prosecution history.
Accordingly, after analysis of the claims, the specification must be reviewed to determine if the inventor has used any words in the claims that differ from their ordinary and customary meaning. If the inventor does not define an uncommon or new definition for a claim term, it will be given the common meaning of the term to one of ordinary skill in the art.
If successfully introduced into evidence, the court may consider the patent's prosecution history. The prosecution history contains the original application, communications between the U.S. Patent and Trademark Office and the applicant or the applicant's agent, notes regarding interviews as recorded by the patent examiner and specific statements form the patent examiner on the reasons for allowing the patent claims.
The applicant may, in fact, have disclaimed certain interpretations of the patent in the prosecution history. Furthermore, the patent examiner may have recorded in the prosecution history an analysis of the prior art and the applicant's acquiescence with regard to the prior art. The prosecution history serves as a "legislative history" of the patent.
In cases in which the public record, consisting of the claims, drawings, specification and prosecution history, unambiguously set forth the claims' meanings, then reliance on other evidence is improper. See Vitronics Corp. v. Conceptronic Inc., 39 U.S.P.Q.2d 1573, 1577 (Fed. Cir. 1996). The theoretical basis for this rule is that the public is entitled to review and rely upon a patent's public record to be modified, altered or changed by other sources of evidence, such as prior art and expert testimony, undermines the public's justifiable reliance upon the public record.
If there is ambiguity in the construction of the claims after consideration of the public record (the intrinsic evidence), then the court may rely on extrinsic evidence, such as prior art and expert testimony, to interpret and construe the claim. Id. at 1578. Prior art is to be given more weight by the court than expert testimony, since prior art may indicate what persons of ordinary skill in the art understood to be the meaning of certain terms and phrases at the time of the invention.
Expert testimony only indicates what an expert believes a term means. Such testimony, however, that is inconsistent with the specifications and prosecution history, is to be given not weight. Id. Expert testimony may be used to assist the court in its understanding of the underlying technology reflected in the claims, but is not itself to be relied upon to establish a claim's meaning.
At the time the district court enters an interlocutory order, it has the power to certify that order for immediate appeal before the case's merits are decided. 28 U.S.C. Section 1292(b) provides in pertinent part:
"When a district judge, in making a civil action an order not otherwise appealable under this section, shall be of the opinion that such an order involves a controlling question of law as to which there is substantial ground for difference of opinion, and that an immediate appeal from that order may materially advance the ultimate termination of the litigation, he shall so state in writing in such order."
When a party seeks a Section 1292(b) interlocutory appeal the Court of Appeals must first determine whether the district court has properly found that the statute's certification requirements have been met. The certification requirements are that the case involves controlling questions of law, issues as to which there is substantial ground for difference of opinion and an immediate appeal may materially advance the litigation's ultimate determination. General Dynamics Corp. v. American Telephone & Telegraph Co., 658 F. Supp. 417, 418 (N.D. Ill. 1987).
The 9th U.S. Circuit court of Appeals has held that while Congress did not specifically define what is meant by a controlling question of law, the legislative history of Section 1292(b) indicates that the section is to be used only in exceptional situations in which allowing an interlocutory appeal would avoid protracted and expensive litigation. In re Cement Antitrust Litigation, 673 F.2d 1020, 1026 (9th Cir. 1982); Katz v. Carte Blanche Corp., 496 F.2d 747, 755 (3d Cir. 1974).
Since patent-claim interpretation involves only a question of law, all district court decision relating to claim construction are subject to de novo review by the U.S. Court of Appeals for the Federal Circuit. The Federal Circuit in Markman made clear that it would have the final work in claim interpretation notwithstanding the decision of the district court judge. Markman, 52 F.3d at 979. Should the three-judge panel of the Federal Circuit dispute the district court's claim interpretation, the entire case could be remanded for retrial on the Federal Circuit's interpretation of the claims. Elf Atochem, 894 F.Supp. at 857.
In a court trial, claim-construction issues can be resolved after all evidence has been presented. In a jury trial, however, delaying resolution of claim interpretation raises serious practical problems on how to fairly rule on claims issues while the jury waits. Also, it would appear to be more efficient to have completed Federal Circuit review of claim interpretation before trying the case to a jury to avoid wasting jurors' time if the court has incorrectly instructed the jury on the meaning of a claim term. Id.
The Elf Atochem court explained: "Sensing the importance of claim construction on the outcome of patent cases, parties will likely seek ways to promptly bring the issues before the Federal Circuit. In cases where parties dispute facts surround the accused product, once the court resolves the meaning of the claim terms, the parties will seek an immediate interlocutory appeal to avoid the possibility of dual trials should the Federal Circuit reverse the trial court's claim construction on an appeal from a jury verdict." Id.
Markman and the cases interpreting it establish the policy that claim construction should be decided by the district court early in the litigation. Exxon Chemical Patents Inc. v. Lubrizol Corp., 64 F.3d. 1553 (Fed. Cir. 1995). No policy has been established that district courts should automatically certify for immediate appeal interlocutory decisions or rulings concerning the interpretation of patent claims.
Given, however, that claim interpretation is so vitally important in patent cases and involves controlling questions of law that may materially advance the litigation's ultimate determination, it would appear that under the general principles of appeals for interlocutory orders that the district court, in an appropriate case and on motion form one of the parties, should certify for appeal in an interlocutory decision concerning interpretation of patent claims.
Claim construction and interpretation by the court at the Markman hearing must be based upon the court's analysis of the claim, drawings, specification and prosecution history. In the event there is ambiguity in the claim construction and interpretation after this analysis, the prior art, whether or not considered by the PTO, along with expert testimony to help the court understand the underlying technology, may then be relied upon to construct and interpret the claims.
The district courts are to promptly interpret patent claims. Given the vital nature or claim interpretation in patent case, and in view of judicial economy, parties can be expected to appeal the district court's findings in Markman hearings. Generally it would appear that such appeals should be favored, particularly in jury cases.
Posted with permission of the Los Angeles Daily Journal Corp.