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Tag: Claim Construction

Patents Explained: Claims

At last, the claims!  The heart of the patent!

Appropriately bringing this series of explanatory posts to an end, the claims conclude a patent.  A patent can have one claim or many; generally, though, they’ve got 20 or less because the Patent Office will let you write up to 20 claims without paying extra fees for additional ones.  If the invention necessitates a more complete claiming profile, going beyond the 20 may be a good idea.

Patent claims are written in independent and dependent form.  Independent claims stand on their own.  Dependent claims – get this – depend from independent claims.  They include all the subject matter of the independent claims from which they depend and then add additional subject matter, making the dependent claim more specific (narrower) than the independent claim.  Again, the Patent Office will let you have 3 independent claims “for free.”

The claims are what count when it gets down to litigation.  They define the scope of the invention or how far the protection of the patent extends.  Therefore, whether the defendant’s product infringes the patent depends on the breadth of the claims.  However, the claims aren’t considered in isolation.  Their relationship to the drawings, the detailed description, and the patent’s disclosure as a whole is important, because those parts affect how the claims are construed in court.  So while the claims are a crucial component of the patent’s protection, they aren’t the whole story.

2009-1001 Gemtron Corp. v. Saint-Gobain Corp.

Decided: July 20, 2009

Plaintiff Gemtron sued Saint-Gobain for infringement of its patent on a refrigerator shelf. Gemtron’s claim 23 detailed a one-piece plastic shelf frame that accepted a glass shelf with a “snap-secure” mechanism that locked the glass into the edges of the frame without adhesive. Saint-Gobain’s shelf system used an adhesive to attach the glass shelf to the plastic frame, but the district court granted partial summary judgment for Gemtron because it was possible to snap the glass into a Saint-Gobain shelf frame at the time of insertion, relying on expert testimony that showed that at the time of manufacture, the shelf was warm and therefore flexible enough to accept the glass.

Claim 23 stated that the frame has a “relatively resilient end edge portion which temporarily defects and subsequently rebounds to snap-secure.” Because claim construction is an issue of law, the court of appeals reviewed the construction de novo. The court held that the claim was limited to the time of manufacture, and not to all times as Saint-Gobain had argued, hoping to differentiate its glued-down shelf system. In deciding this, the court limited its construction analysis to the language of the patent itself. While the claim did not use time-limiting language, the claim itself did suggest that the resilience was necessary only when inserting the glass. Further, the court looked to the patent’s background section, which contrasted by reference the ways in which prior art shelves were assembled. The court also noted that the specification of the patent denigrated shelf systems that used an adhesive as more expensive and more complicated to produce. The court therefore affirmed the trial court’s construction of claim 23.

The court likewise reviewed the grant of partial summary judgment de novo, looking for a genuine issue of material fact. Saint-Gobain had failed to dispute that its frame could be deflected to accept insertion of the glass at assembly. Further, expert video evidence showed that the glass was actually pressed into the frame by an employee when assembled in a way that the frame deformed and snapped the glass into place. Contrary claims came from Saint-Gobain for the first time only at oral argument on appeal, which the court held was too late to be evidence that could be considered.

Saint-Gobain finally argued that because the assembly of its shelves had occurred in Mexico, outside the US, it could not infringe Gemtron’s patent. However, Section 271(a) prohibits the making, using, selling, or offering to sell in the US the claimed apparatus, or importing the apparatus into the US. Even if an infringing product is made outside the US, it infringes when it is imported, or when it is sold, used, or offered to be sold. The court affirmed the grant of summary judgment.