July 26th, 2011
Practice points on claim drafting and claim construction.
One, two, three, four! I just counted the wheels on an automobile. In counting to four, I noticed that the car had at least one wheel, at least two wheels and at least three wheels. Regardless of the particular product, many patent infringement law suits have erupted into a dispute over how many of a particular component are covered by claims in a patent for that product. As it turns out, the Courts have ruled that it depends on the interpretation of the patent claims. A recent law suit initiated by Rolls-Royce PLC provides some interesting insight on the importance of careful drafting of patent claims.
Rolls-Royce PLC recently sued United Technologies Corp.'s (UTC) Pratt & Whitney for infringement of claim 1 of one of its jet engine patents (i.e., U.S. Patent No. 6,071,077, hereinafter the ‘077 patent) which includes rotor blades which have three sweep angles.[i] Rolls-Royce alleged that one of Pratt & Whitney's jet engines has rotor blades with four sweep angles and therefore infringes claim 1.
To establish infringement of any claim of a United States patent, each element and limitation in that claim must be found in a proposed product. In addition, one cannot avoid infringement merely by adding elements if each element recited in the claims is found in the accused device.[ii]
In some instances, analysis of whether each element and limitation of the claim is found in the proposed product fuels a debate over how many of a specific element is covered by the claim. For example, in the early 2000's, the Gillette Company accused Energizer Holdings, Inc. and Schick Manufacturing, Inc. et al. that the Schick Quattro four blade razor infringes its patent which recites, in pertinent part, "a safety razor blade unit comprising a guard, a cap, and a group of first, second, and third blades."[iii] Gillette alleged that since the Quattro has four blades, it infringes its patent which recites three blades.
In the Rolls-Royce case, the Court provided some important claim construction principles in addition to those stated in the highly publicized Gillette case.
The use of the word "comprising" in a patent claim creates a presumption that the body of the claim is open, meaning that "recited elements are only a part of the device, that the claim does not exclude additional, unrecited elements."[iv] In contrast, the term "having" does not convey the same open-ended meaning as the term "comprising." Therefore, the term "having" does not create a presumption that the body of the claim is open."[v]
The Rolls-Royce case was decided based upon the meaning of the term "having" as described below. Claim 1 of the ‘077 patent recites, in pertinent part:
"a fan rotor including a multiplicity of swept fan blades . . . said sweep angle having a forward sweep angle in a first height region between the root and a first intermediate radius, a rearward sweep angle in an intermediate height region between the first intermediate radius and a second intermediate radius, a forward sweep angle in a third height region between the second intermediate radius and the tip of the blade."
The three sweep regions are shown below in FIG. 5a of the ‘077 patent.
UTC argued that its jet engine with four sweep ranges does not infringe claim 1 of the ‘077 patent because claim 1 is limited to three sweep regions. On the other hand, Rolls-Royce argued that claim 1 of the ‘077 patent is not limited to three sweep ranges, but instead also covers four sweep rotors such as UTC's four sweep rotor.
In May of 2011, the Court issued a Decision in favor of UTC.[vi] In the Decision, the Court deemed the term "having" in claim 1 to be a closed term. The Court ruled that claim 1 was limited to three sweep regions. The Court based its Decision on the fact that the three sweep regions are described in the specification as being essential features of the jet engine.[vii] In addition, the Court stated that the specification and claims mentioned no sweep regions other than the three recited in claim 1.
The Rolls-Royce Decision underscores the importance of claim drafting in order to provide the broadest patent protection for products offered in the market. In response to the author's question about whether the four wheeled Rolls-Royce automobile has three wheels, I think I can safely say "it depends."
[i] Rolls-Royce PLC v. United Technologies Corp. (d/b/a Pratt & Whitney), 1:10cv457 (LMB/JFA), (hereinafter the Rolls-Royce case).
[ii] The Boeing Co. v. The United States, 69 Fed.Cl. 397 (Fed.Cl. 2006).
[iii] The Gillette Co. v. Energizer Holdings, Inc. 2005 Markman 3481321, (D. Mass. 2005)
[iv] Crystal Semiconductor Corp. v. Tritech Microelectronics Intl. Inc., 246 F.3d 1336 (Fed. Cir. 2001).
[v] Id.
[vi] Rolls-Royce case, Doc. No. 652.
[vii] Id.
