Presentation Transcript

1. Design Patent Claim Construction Design patent claim construction basics Judge Koh’s design patent claim construction analysis Judge Koh’s amending design patent claim construction order
2. Design Patent Claim Construction Basics Drawings rather than words in claims are construed Role of court is to construe design patent claims Limited role File history still can play a role File histories impact claim construction for several patents-in-suit Interpretation of drawings also guided by drafting conventions E.g., broken lines, cross-hatching, diagonal lines Court more willing to incorporate these as part of its claim construction
3. Judge Koh’s Analysis Court deferred ruling on whether scope limited as result of functional elements Court set out the ordinary observer test An accused device infringes a design patent if, in the eye of an ordinary observer, the design of the accused device and the patented design are “substantially the same” Substantially the same if the resemblance between the accused device’s design and the patented design is such as to deceive an ordinary observer, inducing him to purchase one supposing it to be the other Focus should be on the overall design of the patent
4. Judge Koh’s Analysis Cont’d Court pointed to Fed. Cir. rulings that design patent claim construction does not require a detailed verbal description of the claimed design “A picture is worth a thousand words” Focus on particular features of the design patent-in-suit improperly takes focus off design as a whole
5. Judge Koh’s Analysis Cont’d Prior art should not guide claim construction Infringement analysis relies on prior art for frame of reference Court said Samsung’s effort to limit the scope of the patent in light of prior art in effect would invade the province of the jury to determine infringement E.g., Samsung argued that prior art references limit the scope of the D’889 patent “The D’889 is for an ornamental electronic device design that (i) has the shape that is shown in all views of the figures, with . . . relative thick sides . . . , (ii) has a uniform gap around the entire front face . . . , (iii) has no . . . Holes on any surface and (iv) has a single frame . . . . In addition the D’889 does not give Apple rights to a large display screen . . . , to the use of a transparent cover over the display or to the size and proportions that allow for the portability of tablet computer devices.” Samsung really tried to engage in after-the-fact patentability analysis in order to narrow claim scope
6. Judge Koh’s Analysis Cont’d D’087 Broken lines Lack of oblique line shading Lack of surface shading Court’s construction consisted of instructing jurors on design patent drawing conventions
7. Judge Koh’s Analysis Cont’d D’677 No broken line disclaimer Implausible that broken lines do not denote disclaimer File history shows intent to disclaim Oblique line shading Solid black surface shading Again, Court’s construction focused on drawing conventions
8. Judge Koh’s Analysis Cont’d D’889 Broken lines Oblique line shading MPEP says it signifies a “transparent, translucent and highly polished or reflective surface” Court says that is the proper meaning of fig. 2 . . . What are the ramifications of her ruling for the Tab 10.1? Again, Court’s construction focused on drawing conventions
9. Judge Koh’s Analysis Cont’d D’305 Broken lines Express disclaimer Prosecution history Court refused to import statements in prosecution history of later filed D’790 patent to limit the claim scope of the D’305 patent “It would be improper to isolate a disclaimer based on a single feature of a design patent and apply it to limit the scope of a related design patent. This is because it is often not possible to determine whether the importance of the design element in the overall visual impression is the same in two related patents.” Court’s construction focused on drawing convention
10. Judge Koh’s Amending Design Patent Order MPEP says “transparent, translucent and highly polished or reflective surface” Court previously applied, but ignored the and Court interpreted language in common sense fashion Surface can be either transparent, translucent, or reflective, but it can’t be more than one of those So Court substituted or for and in the MPEP definition
11. Utility Patent Claim Construction Utility patent claim construction basics Why focus on ‘915? Claim 8 Disputed phrase in claim 8 of ‘915 Court’s analysis
12. Utility Patent Claim Construction Basics Intrinsic evidence, then extrinsic Claim language Express definition Claim differentiation Specification File history
13. Why Focus on ‘915? Time and complexity Claims directed to what happens when user makes a scroll or gesture movement using a touch display Scroll is a single touch by user Gesture is two or more touches by user These movements constitute an event That event has certain information associated with it That collection of information is referred to as an “event object”
14. Claim 8 Says method determines whether user input was scroll or gesture If scroll, response is “scrolling a window having a view associated with the event object” Dispute over what that means If gesture, response is to scale the view based on the two or more inputs by the user That’s the “[un]pinch to zoom” feature of the patent
15. Disputed Phrase in Cl. 8 of ‘915 “Scrolling a window having a view associated with the event object” Samsung’s position “Scrolling a window” means moving the window pane over the view in the direction of the scroll Window slides over stationery text Apple’s position Window stationery and text slides through window Implications of each position
16. Court’s Analysis Classic claim construction analysis Looked to claim language but didn’t find guidance Looked to specification and found two reasons for rejecting Samsung’s construction: Specification describes scrolling as the act of sliding a directional presentation of content . . . across a screen or display window (1:39-41) Samsung reads out preferred embodiments of the claimed invention Figs. 6A, B (9:16-28) Presumption against a claim construction that excludes preferred embodiments
17. Pulling It All Together Design patent claim construction Minimal Drawing conventions Don’t ignore file history Utility patent claim construction Intrinsic evidence Claim language Specification File history Construction that excludes preferred embodiments is suspect
18. Questions Why did the parties adopt their respective, proposed constructions for “Scrolling a window having a view associated with the event object”? Had Samsung prevailed, what would have been the impact on Apple’s claim for infringement of claim 8 of the ‘915 patent? Why did the Court treat broken lines as unclaimed subject matter in the D’677 (even though it lacked an express disclaimer), but claimed subject matter in the D’889?