Swallowing the apple whole: improper patent use by Local Rule.

• Author: Turner, Ellisen S.
• Position: Northern District of California Patent Local Rules

BACKGROUND

During patent infringement litigation, the Federal Rules of Civil Procedure ("FRCP") and the federal district court's local rules govern the parties' pretrial discovery and motion practice. (1) The U.S. District Court for the Northern District of California has adopted the most comprehensive local rules to date covering pretrial procedures in the patent litigation context. (2) The Northern District of California Patent Local Rules ("Local Rules") (3) may come to have a significant impact throughout the federal courts, as it appears that other jurisdictions and commentators are looking to the Local Rules for guidance. For instance, the American Bar Association Section of Intellectual Property Law ("ABA/IPL") closely examined the Local Rules, found them to have considerable merit, and appeared to use an early version of the rules as a basis for the ABA/IPL 1999 proposed resolutions governing patent claim construction practice and procedure. (4) Federal courts in several other districts have occasionally cited the Local Rules in their opinions and have been willing to use the Local Rules as a guide in developing their own patent infringement litigation procedures. (5) In order to understand how the Local Rules affect the patent litigation process, a short review of patent law is necessary.

The Constitution grants Congress the power to promote the progress of the useful arts by giving inventors the exclusive right to their discoveries for limited times. (6) In other words, Congress may induce inventors to disclose their creations by providing them with a limited monopoly right. The U.S. Patent and Trademark Office ("PTO") issues patents that vest such a legal monopoly in the patentee by granting the right to preclude others from making, using, selling, offering to sell, or importing the patented invention. (7) The patent's subject matter is set forth in the specification, which contains the written description of the invention and the patent "claims." (8) The claims are the legal language that defines the metes and bounds of the patentee's monopoly right, (9) while the written description explains the invention and provides the context for the terms used in the claim language. (10)

The claims of a patent may vary in scope. Broad claims contain fewer limitations, or "elements," (11) than narrow claims and thus describe, or "read on," (12) a wider range of subject matter. (13) It is usually beneficial for the patentee to have a patent with broad claims in order to reach as many potential competitors as possible, and to prevent competitors from "designing around" the patent by examining the claim language and then purposefully designing a device that avoids infringement by substituting or removing claim elements. (14) Conversely, if the patentee drafts the claims too broadly they may be invalid in view of the "prior art" -- previously existing innovations that either are already the subject of a previously issued patent or are otherwise part of the public knowledge. (15) Claims that are apparent given the public knowledge of the state of the art are invalid because the claimed invention is obvious, while claims that read directly on the prior art are invalid because the claimed invention lacks novelty. (16)

A patentee (17) seeking to enforce its limited monopoly may initiate a suit alleging that an adverse party improperly infringed its patent. (18) Patent litigation normally begins when a patent claimant files a patent infringement complaint in a U.S. Federal District Court. (19) The U.S. Court of Appeals for the Federal Circuit has exclusive jurisdiction for appeals of district court judgments decided under the federal patent laws. (20)

Courts tend to perform patent infringement analysis in two stages. (21) In the first stage, the court construes, or interprets, (22) the claim language. Claim construction entails clarifying the technical terms, terms of art, special term usages, and ambiguous terms in the claims (23) as well as determining the scope of those terms. (24) When construing claims, the court can neither broaden nor narrow the claim scope to give the patentee something different than what the patent set forth. (25) In essence, claim construction is the process of elaborating terse language in order to understand and explain it, but not to change its scope. (26)

As parties propose a claim construction to the court, they may buttress their position by relying on two types of evidence -- intrinsic and extrinsic. (27) In the jargon of patent litigation, "intrinsic evidence" consists of only the claims, specification, and prosecution history (28) of the patent in suit. (29) Any other evidence referenced during claim construction is termed "extrinsic evidence" and may include, inter alia, expert testimony, inventor testimony, technical dictionaries, technical treatises and articles, and information related to the allegedly infringing device or process. (30) Once claim construction is complete, the scope attributed to the claims operates to limit the patent claimant's rights in the remaining litigation. (31)

In the second stage of infringement analysis, claim application, the court determines whether any of the claims as construed read on the accused instrumentality (32) either literally or under the doctrine of equivalents. (33) Generally, literal infringement occurs only if each and every claim element is present in the accused instrumentality. (34) Conversely, if one or more claim elements are missing, there is no literal infringement. (35) The doctrine of equivalents allows a court to find infringement when someone copies the heart of an invention but avoids the literal claim language by making a trivial change in the design of an accused instrumentality. (36) This doctrine allows the patentee a broader right to exclude than what the literal claim language provides. For example, assume a patent specification includes element A in one claim describing the invention. Subsequently, a competitor attempts to design around the patent by producing a competing product that fully embodies the patent claim except that the competitor replaces element A with an alternative -- element B. There is no literal infringement of that patent claim because the competing product does not include each and every claim element, but the doctrine of equivalents allows a court to find infringement by ruling that element B is equivalent to element A. Thus, in creating a realm of protection for its invention, the patentee's first bite at the apple is in its drafting of the literal claim language. The doctrine of equivalents is simply a second bite at the apple as the patentee attempts to prove infringement in a court of law. (37)

Despite this expansive effect, the doctrine of equivalents technically does not broaden the scope of patent claims; rather it expands the patentee's right to exclude. As the Federal Circuit explained in Wilson Sporting Goods Co. v. David Geoffrey & Associates:

This court on occasion has characterized claims as being "expanded" or "broadened" under the doctrine of equivalents. Precisely speaking, these characterizations are inaccurate. To say that the doctrine of equivalents extends or enlarges the claims is a contradiction in terms. The claims -- i.e., the scope of patent protection as defined by the claims -- remain the same and application of the doctrine expands the right to exclude to "equivalents" of what is claimed. The doctrine of equivalents, by definition, involves going beyond any permissible interpretation of the claim language; i.e., it involves determining whether the accused product is "equivalent" to what is described by the claim language. (38) Three conclusions should be clear from the Wilson Sporting Goods analysis. First, the procedural timing of the doctrine of equivalents -- during the claim application stage of infringement analysis rather than the claim construction stage -- precludes a court from expanding the literal claim scope. Second, the proper method for a court to expand the patent monopoly right to include an accused instrumentality that does not literally infringe is through an application of the doctrine of equivalents, not through an expansion of the literal claim scope. Finally, the literal claim language limits the doctrine of equivalents because elements in the accused instrumentality must be the equivalent of elements literally claimed. (39)

This difference between expanding the literal claim scope and expanding the right to exclude is subtle but of considerable consequence because the doctrine of equivalents rests in delicate equipoise with the patent claims' public notice function. The public notice function is the principle, inherent in a claim based patent system, that the invention is exactly what the claims says it is, and that members of the public can avoid infringement by avoiding the claim language. (40) The PTO and the patentee serve the public notice function of a patent when they cement the literal scope of the patent monopoly in the public record (41) at the time the patent issues. A patent monopoly right is the patentee's quid pro quo for providing this disclosure to the public and enabling subsequent innovation. Whenever the patent monopoly right expands beyond the disclosure in the public record, the patent's public notice function disintegrates because parties are entitled to rely on the public record in order to make incremental innovations by building on or designing around the patented invention. (42)

The public's entitlement to rely on the public record only has value if potential competitors are able to determine where the patent monopoly ends and free competition begins. It is for this reason that patent law precludes a patentee from misusing a patent by expanding the patent monopoly's scope with anticompetitive effect. (43) This Note therefore concludes that when a patent claimant is able to reference an accused...