Chapter §14.07 Two-Step Analysis for Patent Infringement

• Jurisdiction: United States

§14.07 Two-Step Analysis for Patent Infringement

Numerous judicial decisions provide that analyzing patent infringement is a two-step process comprising:

1. Interpreting the patent claims; and

2. Comparing the properly interpreted claims with the accused device. ³⁹¹

Each of these critical steps is examined separately in the following two chapters of this treatise.³⁹² This subsection provides a brief introduction.

The first step of the infringement analysis, interpreting the claims, is sometimes referred to as "claim construction" or as the task of "construing" the claims. This treatise generally uses the terminology patent claim "interpretation" rather than "construction," because the notion of construction is somewhat confusingly similar to claim drafting, a related but conceptually distinct task.³⁹³ Claim drafting involves writing patent claims in the first instance for inclusion in a patent application. Patent claim interpretation typically involves determining the meaning and scope of those claims at a later point in time, either by a court or party to infringement and/or validity litigation involving an issued patent. Patent examiners in the USPTO are also involved in interpreting the meaning and scope of the patent application claims they are examining.³⁹⁴

Step two of the analysis, comparing the properly interpreted claims with the accused device,³⁹⁵ is sometimes referred to as "reading the claims onto the accused device."³⁹⁶ A patent claim is said to "read on" an accused device when the device would infringe the claim³⁹⁷ (likewise, a patent claim is said to "read on" the prior art when the prior art would anticipate the claim). It is improper to say that a device "reads on" a patent claim, however. Claims "read on" accused or prior art devices, not the other way around.

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Notes:

^[391] See, e.g., Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998) (en banc) ("First, the court determines the scope and meaning of the patent claims asserted. . . . [Second,] the properly construed claims are compared to the allegedly infringing device.") (citations omitted); Caterpillar Tractor Co. v. Berco, S.p.A., 714 F.2d 1110, 1114 (Fed. Cir. 1983) (citing Autogiro Co. of America v. United States, 384 F.2d 391, 401 (Ct. Cl. 1967)).

In the comparison step (Step Two of the process for analyzing infringement), infringement will be found only if each and every limitation of the claim is met in the accused device, either literally or under the...