By Renu Bala and Aditya Kumar
Introduction
A patent is awarded for innovative, non-obvious, and useful intellectual work, enabling the patent holder to commercially exploit the patented technology and prevent others from profiting from it. The rise in annual patent filings and the increasing number of patent infringement cases highlight innovators’ growing confidence in the patent system, as almost all national patent laws enable patent holders to defend their rights in case of unauthorized infringements. The statistics underscore this trend: to date, over 40 million patent applications have been filed globally, with an impressive 3.6 million applications submitted worldwide in 2023 alone.[1]
A patent document is divided into several sections to present an invention in a structured manner. These sections include the background, which references existing work in the same field of technology and addresses the problem the invention aims to solve; the description, which explains how the invention works and its various real-world applications, enabling skilled individuals to reproduce it; the drawings, which depict the structural features of the invention to help readers understand it clearly; and the claims, which define the legal scope of the invention.[2]
The force will be with you. Always.[3] The true guiding force of a patent lies in its claims. Claims are the essence of a patent, enabling the holder to reap significant financial benefits. They define the boundaries of protection, granting the patent holder exclusive rights that lead to financial gains, competitive advantages, enhanced branding, and better investment opportunities. It is also essential to understand that the protection offered by the patent system is contingent upon fair trade and healthy competitive practices. Any engagement in unfair trade or anti-competitive behaviour may compromise the extent of this protection. Additionally, patents can be scrutinized even after they are granted, either through post-grant opposition or revocation proceedings. Patent offices examine claims in response to post-grant oppositions filed by interested parties within one year of the grant’s publication. Similarly, courts may review patents in response to counterclaims of invalidity in patent infringement lawsuits.
Therefore, drafting patent claims is essential from the beginning when preparing a patent specification, as it allows the patent document to withstand two levels of legitimacy checks. The first barrier arises during the prosecution stage, which begins with the applicant filing an examination request. The patent office then issues objection notice(s) with formal and technical objections to scrutinize the patentability of the invention, continuing up to the grant of the patent. Additionally, a patent application can be challenged before its grant by any third party to assess its patentability, or up to one year after its grant by an interested third party questioning its patentability. The second barrier arises during infringement proceedings initiated by the patent holder against an alleged infringer. In this scenario, the infringer may file a counterclaim to challenge the patent’s validity and request its revocation based on provisions available in their country’s patent laws. During this stage, judicial authorities interpret the granted claims to evaluate their legal scope, a process known as claim construction.
A brief introduction to claim construction is provided for readers’ quick reference. The World Intellectual Property Organization (WIPO), in its guide ‘An International Guide to Patent Case Management for Judges,’[4] considers claim construction as a legal question and highlights its importance in patent litigation. Claim construction involves interpreting patent claims by considering the description and drawings defining and describing technical features of the invention from the perspective of a person with ordinary skill in the relevant field. This interpretation can vary across different jurisdictions.[5] In certain jurisdictions, patent prosecution files are considered in the construction process, whereas in others, they are not admissible.
For instance, the US Supreme Court’s ruling in Markman v. Westview Instruments[6] formed the foundation for contemporary claim construction practices in the US. During Markman’s hearing, the US Supreme Court held that patent claim construction is a question of law to be decided by the court. The court observed that judges, who are more likely to accurately interpret a patent document due to their training and discipline in interpreting written instruments, are suitable to interpret claims’ meanings in patent documents.
Further in Phillip’s[7] case, which still serves as a review guideway for claim construction, the US Court of Appeals for the Federal Circuit relied on the ordinary and customary meanings of the terms as understood by a person skilled in the relevant field to interpret the claims, followed by the context provided by the patent’s specification and prosecution history.
In Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc.[8], the court reiterated the significance of intrinsic evidence such as the patent document and prosecution history and observed that extrinsic evidence such as expert testimony can be used to aid in understanding the intrinsic evidence, but not otherwise. The court in the Teva case reaffirmed the Markman hearing’s observations that the interpretation of a patent, including the specialized terminology within its claims, falls solely within the jurisdiction of the court.
Moreover, in Malvern Panalytical Inc. v. TA Instruments-Waters LLC[9], the court favoured intrinsic evidence and broadly interpreted the claims based on the description in the specification to understand the scope of the patent. The same was established in ABS Global, Inc. v. Cytonome/ST, LLC[10], wherein the court emphasized the importance of clear and precise claim construction and reversed the PTAB decision for carrying out a narrow interpretation of claims.
Recently, the US Court of Appeals for the Federal Circuit in Doggyphone v. Tomofun[11] performed claim construction to determine whether the patent was infringed. A brief background and analysis of the appellate court’s observation on claim construction is discussed below.
BACKGROUND
In the instant case, a US patent No. 9,723,813[12] titled ‘Internet canine communication device and method’ allowing humans to interact with their pets remotely was assigned to the appellant DoggyPhone LLC. Claim 7 of the patent recites a system for communicating with a pet which enables a remote user to send a treat delivery command to dispense food to a pet and further allows the user to receive live audio or video of the pet’s response thereto. In 2019, the appellant sued the appellee Tomofun LLC for infringing on claim 7 of its patent. The district court agreed with the appellant’s argument that the claims should be construed per their plain and ordinary meanings.
The appellee’s product “Furbo”, an interactive pet camera device, allows users to remotely engage in activities such as watching, talking, and tossing treats to their pets through mobile phones. Furbo worked in two modes. In standard mode when a pet’s activity e.g., dog barking is detected, a text notification is sent to the user enabling him to see the current video by clicking on the notification. In cloud recording mode, live video recording is saved on the cloud server after detecting the pet’s activity and a text notification is sent to the user to see the recorded video.
Upon claim construction, the district court found that Furbo’s standard mode does not contain the limitation of initiating transmission of auto live audio or video of the pet’s response to the user, rather the user is required to click on the notification to see the current video. Further, Furbo’s Dog Nanny or cloud recording mode only allows a user to see recorded video from a cloud server. The district court granted summary judgment in favour of the appellee as a matter of law, hence the appellant filed the appeal for review of the district court’s decision.
COURT’S OBSERVATION
The appellant favoured plain and ordinary meanings of claims and argued that as long as the pet’s action initiates a sequence of events that leads to transmission, it fulfils the requirement, even if there are intermediary steps involved. The appellant contended that the appellee’s product Furbo necessarily infringes the “begins transmission …” feature of claim 7 as the transmission begins once a pet’s response is received. The appellant argued that the pet’s activity triggers a series of events resulting in the live audio or video transmission to the user, which is a necessary condition for the transmission to happen.
The court interpreted the claim language and found that the transmission begins once a response from the pet is received as recited in claim 7 as “the system begins transmission to the remote client device of at least one of the audio or video of the pet in response to input from the pet”, whereas Furbo requires the intervention (clicking on notification) by the user to see the live transmission but not otherwise. The Court observed that in the case of Furbo, live audio or video transmission only starts when the user clicks on the notification, and if the user doesn’t select the notification, the live video or audio would not be transmitted, as the notification itself does not include live audio or video.
The court relied on the two-step infringement analysis wherein claims are construed for their proper meaning and scope in the first step, and further compared with the accused product in the second step. The court also mentioned that “A claim covers an accused device if the device embodies every limitation of the claim.” Accordingly, while analyzing the claimed feature and comparing it with the accused product, the court rejected the appellant’s argument. It determined that the appellant’s claim involves initiating transmission directly in response to the pet’s activity. In contrast, the accused product does not begin transmission based on the pet’s input; instead, video transmission is triggered only after the user interacts by clicking on the received notification.
COURT’S DECISION
The court held that under the plain and ordinary meaning of the claim language, there is no genuine dispute of material fact regarding whether the appellee’s Furbo device infringes. The transmission does not start in response to the pet’s activity but is initiated by an intervening user action. Consequently, the court affirmed the district court’s grant of summary judgment in favor of the appellee Tomofun.
Conclusion
The claim construction plays a pivotal role in the patenting process, as it directly impacts the enforcement and scope of patent rights. The precision and clarity of claim language in a patent specification are crucial in ensuring robust protection against infringement and avoiding unintended ambiguities that could lead to revocation. As demonstrated by landmark cases such as Markman, Philips, and Teva Pharmaceuticals, courts carefully analyze claims to ascertain their technical scope and legal interpretation. These cases not only interpreted the technical scope of patent claims but also highlighted the importance of intrinsic evidence and the role of the judiciary in defining a patent’s scope. The recent judgment in DoggyPhone LLC v. Tomofun LLC further underscores the ongoing relevance of claim construction, where the court’s interpretation of the appellant’s claims determined the outcome of the infringement dispute. Therefore, meticulous attention to detail and strategic drafting of claims are essential to safeguard an invention and maximize its legal enforceability. This highlights the indispensable importance of claim construction in shaping the strength and viability of a patent.
[1]https://www.wipo.int/en/ipfactsandfigures/patents
[2]https://www.wipo.int/edocs/mdocs/sme/en/wipo_ip_cm_99/wipo_ip_cm_99_16.pdf
[3]Quote by Obi-won in Stars Wars Episode 4 (A New Hope)
[5]Ibid.
[6]Markman v. Westview Instruments Inc., 517 U.S. 370 (1996)
[7] Philips v. AWH Corporation, 415 F.3d 1303 (Fed. Cir. 2005)
[8]Teva Pharma. USA, Inc. v. Sandoz, Inc., 574 U.S. 318 (2015)
[9]Malvern Panalytical Inc. v. TA Instruments-Waters LLC, No. 22-1439 (Fed. Cir. 2023)
[10]ABS Global, Inc. v. Cytonome/ST, LLC, No. 22-1761 (Fed. Cir. 2023)
[11]Supra Note 1
[12]See US Patent No. 9,723,813 B2 https://patentimages.storage.googleapis.com/6c/e2/22/ed9e8b444bbffe/US9723813.pdf