5.Now I have done ‘interpretation’, what comes next?

Now I have done ‘interpretation’, what comes next? Infringement.

Coverage

The steps that should be taken when discussing Infringement will be outlined.

After you have read this chapter you should be aware of:

1. The need to look for all of the possible infringing acts.

2. The importance of considering each claim in connection with the infringing act(s).

3.The importance of providing reasons why each feature of the claim is / is not present in the infringing act(s).

It is recommended that after providing the ‘interpretation’ section, in which the meaning of the claims is set out, you should consider the question of infringement of all of the claims before moving on to dealing with validity.

The infringement may be a ‘direct’ infringement, in which case the features of one product or method may have to be compared with the wording of the claims of the patent, but it is quite common for there to be a more complicated situation, with one party making a major component of a potentially infringing product, or supplying a specific material for use in a method, or carrying out some steps of the method, with other method steps being performed by another party. This may make it necessary to deal with ‘contributory infringement’. You may also consider whether a purchaser and user of the product – especially if the product is used in any sort of ‘commercial’ environment, might also infringe.

You must be able to recall the acts specifically excluded from protection by section 60(5) of the Patents Act 1977 (as amended), since some of these acts may appear in FD4.

The examiner may have devised a quite complicated commercial scenario, which is provided to find out if candidates can ‘see the big picture’. Such a scenario can quite accurately represent the problems that face a senior patent attorney in day-to-day life.

Having identified what act(s) might infringe, the details of the act(s) must be considered in the light of the claims. If there is more than one infringing act, then you must either deal with the two (or more) separate acts separately, or else you must deal with the question of the

differences between the acts in a very clear and logical way. To be sure of the marks it may be better to consider the acts separately. If there is a contributory infringement situation, then it may be easiest for the complete product, or the steps of the complete process, to be compared with the claims initially, before considering in detail whether any specific party is a contributory infringer.

The infringement section usually carries a significant proportion of the marks, and the marks are spread over all of the claims. There may be a high proportion of the marks available for the independent claim(s), but this is not necessarily so. You can realistically expect there to be at least one mark for each claim, (including the omnibus claim if there is one) and so good answers will deal with all of the claims. It has been known for candidates to reach a conclusion that the main claim is not infringed, and then to state that because this claim is not infringed, then none of the dependant claims can be infringed. While this may be true in the real world, in the context of FD4 the result, if you follow this course, a potentially significant proportion of the available marks will be put out of reach. Aside from this, if you do not analyse the novelty of the dependent claim features then you will find it harder to perform a decent inventive step analysis of all of the claims.

So, regardless of the conclusions reached, you must keep going to the end of the claims.

Each phrase or feature of each of the claims must be compared with the infringement, and a reason must be given as to why the feature is present or not. Recall that marks are given for the reasoning displayed. When displaying reasoning remember the importance of ‘because’. Item C is not a knife because it is not a knife – is the sort of phrase you may be tempted to write, because any fool can see that item C is not a knife. However, in the context of FD4 you must give reason why it is not a knife, and in particular you must give a reason why it is not a knife as you interpreted the term ‘a knife’ in the construction section. So… Item C is not a knife because it has a serrated blade as found on a saw… does give a reason why it is not a knife. To give

another example, if you say, ‘Item B is clearly a knife and thus falls within the scope of the claim…’ you may well get fewer marks than if you said ‘Item B is a knife because it has handle 1 and a non-serrated blade 2, and is used for ‘cutting’ (see page 2 line 4)…’ {assuming you

construed a knife to be an item with a handle and a non-serrated blade used for cutting in

the construction section}. Here the word ‘cutting’ is in quote marks because the word has been quoted from the identified passage. The reason may seem ‘flimsy’ but that is often inevitable in the world of FD4 where the examiner has to generate a technical situation that can be understood by all, and so where, of necessity, the underlying technology is ridiculously simple. By stating what, to you, may appear to be simple, straightforward, and blindingly obvious, you are showing your reasoning, and enabling the examiner to give you marks.

When you are referring to ‘evidence’ to support your conclusions, give page and line numbers, and quote relevant words.

All of this may seem very ‘forced’ – but to score the marks you have to demonstrate to the examiner that you have a reason for reaching your conclusion – simply reaching a conclusion does not score the marks that you need.

You may reach a situation where you are stating and explaining in some detail what is, to you, the trivial, but this is what the examiner wants. However, you must do it succinctly, and without rambling.

You may well benefit from practising with a style that somehow forces you to give reasons. The style may be the repeated use of the word ‘because’, or the repeated use of ‘therefore’ or by using a set of three columns, with the first column identifying the feature, the second column indicating presence or absence of that feature, and the third column giving the reason.

This ‘tabular’ form can be simplified, by using a style in which the part of the claim under consideration is identified with its reference number, and then the word present or absent appears (or, for the sake of speed a √ or a Χ), followed by the word because and your reason. So, you might write:

1.1 √ because A relates to vehicle safety belts (see page 1 line 2 “..motor car safety belt 1..”) and item 4 is a buckle because Figure 2 shows it receiving a tongue 25….

You will see that this style means you do not have to write the words of the claim again, and as you have automatically written the word ‘because’ after your decision as to whether the feature is present or not, you are forced to give a reason.

By now you must have appreciated that most marks are ‘missed’ in FD4 because candidates do not give any reasons. It is easy to go through the whole of the infringement section, thinking that everything is trivial, and making sweeping statements such as ‘ItemA clearly has a spring…’‘Item B clearly has a handle…’ and secure only a few of the available marks. It is not very difficult to give some ‘evidence’ or reason. If the word ‘spring’ was interpreted broadly as

an element that provides a biasing force, then you could say Item A clearly has a spring –see ‘resilient arm’ 6 which acts to bias ( line 5 page 2) the latch to the closed position.

This helps demonstrate the importance of construing the language of the claims in the construction section with a good eye on what is going to turn up in the infringement (and novelty) sections.

Do not be easily led to a conclusion that there is not infringement simply because the infringement is far superior to the embodiment(s) described in the patent. The fact that the infringer may well have made further improvements to the original invention that may make the alleged infringement patentably different from the disclosure of the patent does not mean that there is no infringement.

In the infringement section all of the words of all of the claims need to be considered, not just those that you have specifically concentrated on in the construction section. Do not fall into the trap of sweepingly dismissing a claim by stating that one specific ‘chunk’ of the claim is ‘missing’ . Look at all of the words of the chunk to see which are there and which are not there. When you find one or more words missing you can make your conclusion. By doing this you may well have picked up marks attached to the consideration of the other features.

It is important to appreciate that in the infringement section you are comparing the or each infringement with each claim as construed by you. So you must compare the infringement with your meaning of each ‘chunk’ of the claim. Thus the words that formed your meaning of the claim should be used again, consistently, in the infringement section as the ‘yardstick’ for infringement.

Look again at the 2014 marking scheme for P6 and observe that in the infringement section a mark was given for reaching a conclusion at the end of each claim as to whether the claim

was infringed, and also observe that a mark was given at the beginning of each sub-claim for indicating whether the dependency had been met. In this marking scheme a candidate could miss out on 4.5 marks for failing to state conclusions and failing to deal with claim dependencies.

When the ‘complete’ product or method of the alleged infringement has been analysed, then consideration can be given to the acts committed by anyone who is a potential contributory infringer, to see if what they are doing is supplying means relating to an essential element of the invention within the terms of section 60 (2).

As and when you reach any conclusion regarding contributory infringement, you must remember to explain your reasoning, showing how the various commercial activities of the players in the plot outlined by the examiner fall within the net of section 60(2).

You should expect there to be a reasonable argument that at least the main claim (or at least one of the independent claims) is infringed, so that you can give sensible advice as to what might be done. If there is no infringement at all the options for action are usually very limited. Consequently, if you reach the view that none of the claims is infringed, go back and have another look, trying to find an argument that there is infringement.

If you find that a claim is not infringed, you might very logically conclude that all the claims dependent on that claim are also not infringed. In FD4 resist that temptation, and analyse the sub-claims. Certainly say that the feature ‘A panel according to claim 1’ has not been met, but discuss the features recited in the claim. Are those features present or not? Then you might logically conclude that the features introduced in the claim have been taken, but the claim is not infringed because of dependency.

If there is a claim that is multi-dependent, and some of the claims it depends from are infringed, and some are not infringed, the consequences of that should be outlined.

EXERCISE 3

In this exercise there is a patent and an infringement.

Read the patent (the claims will be familiar to you) and observe any differences between the described preferred embodiment and the sketch that you drew when you saw the claims for the first time at the end of the previous chapter. Can you see how the description and drawings of the patent may make you understand the language of the claims to have a different meaning?

Look at the infringement. See if you can understand the claims in such a way that the infringement is inside the scope of the claims. Also see if you can understand the claims in such a way that the infringement is outside the scope of the claims. Remember, you do not know if you are acting for the patentee or the infringer at this stage. Now you may appreciate which parts of the claim will need to be construed to determine if there is, or is not, infringement.

The patent is a UK patent granted four years ago and in force.

Saw Blade

This invention relates to a saw blade, and more particularly relates to a bow saw blade.

A known bowsaw has a broad U-shaped frame. One arm of the U carries a fixed peg to engage the blade, and the other arm has another peg on an over-dead-centre lever. The pegs are inserted through holes provided at opposite ends of a steel strip with teeth along one edge as shown in Figure 1, and the lever is actuated to retain the blade under tension. The teeth, which have leading and trailing cutting edges, and which are offset alternately, cut the wood as the saw is drawn backwards and forwards in the cut.

The invention seeks to provide an improved blade in which the teeth are in separate groups.

Figure 2 illustrates a preferred blade.

Strip 1 has an aperture at one end to engage a peg on a bowsaw, and a converging throat hook at the other. The triangular teeth 2 have cutting edges 3. As the saw of the invention is drawn through the wood sawdust accumulates in the gaps 4 between the teeth, and is drawn out of the cut. In this embodiment the teeth of each successive group of four teeth are offset as indicated by the arrows.

The arrangement of the teeth makes the saw more efficient.

5

10

15

20

Claims

1.A blade for a bowsaw formed of a steel strip, the blade having teeth along one edge, the teeth having cutting edges and being arranged in groups of four.

2.A blade according to claim 1 wherein the teeth are offset alternately to one side of the blade or the other.

3.A blade according to claim 1 or 2 wherein the ends of the blade are configured to engage a peg on a bowsaw.

4.A blade according to any one of claims 1 to 3 wherein the groups are separated by clear spaces.

4 Fig 1

3 3

2 1 2

Fig 2

The infringement is best appreciated from the description of Figure 4 of a European Patent Application published last month.

155

160 Figure 4 shows a modified blade having a steel strip 33 with an aperture 34 at one end and a diverging throat hook at the other. This type of hook has the advantage that it can be used very effectively with pegs of different diameters. If the peg on the over-dead-centre handle has a small diameter it may slip out of a round aperture as the handle is operated, but this effect is not seen with a converging throat hook.

In this embodiment the teeth 35 have cutting edges 36. There are raker teeth 37 in the gaps 38. Sawdust accumulating in the gaps 38 is efficiently removed from the cut by the rakers 37, leaving the cut clean and enhancing the cutting ability of the saw on the next stroke.

165

37 36 36 38

35

34

33

Fig 4

35

Now list the points you would concentrate on in your Construction, and identify the ‘clues’ that you might use in determining the real meaning of the word or phrase as it appears in the claim. Some words or phrases will be non-contentious, such as words or phrases that relate to features that are precisely the same in the prior art and in the infringement. Other words or phrases may be more important, as the decision as to whether the infringement is inside or outside the claim will depend on the specific meaning of these words.

Look out for ambiguities, repeated use of a word, and the repercussive effect – they may not be there, but you will not find them if you do not look for them!

You may want to make some rough notes before you turn the page.

If you looked first at just the language of the claims you may have seen the ambiguity in the opening words of claim 1 – is the bowsaw or the blade made of the steel strip? Even before you read the description you may well appreciate the answer to this, but in the FD4 examination you should put a few words explaining the position, and giving a reason. The reason might be just that the described blade is a steel strip… but there is a problem with this as the blade is actually just described as ‘strip 1’ at the very beginning of the specific description, with no mention of ‘steel’. So the description does not actually describe the invention. So the ‘reason’ has to be expanded to refer to the ‘steel strip’ mentioned with reference to Figure 1, and the fact that the skilled person would expect the ‘strip’ of Figure 2 to be of the same material as there is no indication to the contrary. You might write the word ‘Amend’ on your answer to remind you to look again at this point when you deal with the amendment section.

The teeth of the infringement are in exactly the same place as the teeth of the preferred embodiment, and the arrangement of cutting edges identified by reference numerals 3 in Figure 1 is the same as the arrangement shown by the reference numerals 36 in Figure 4, and so the parts of the claim relating to these features are non-contentious. However, a meaning must be given, with reasons, although it should be very brief.

The final phrase ‘arranged in groups of four’ also does not seem contentious.

The offset of the teeth mentioned in Figure 2 may be a problem. The language ‘offset alternately’ is only used with reference to the embodiment of Figure 1. The description of the preferred embodiment only directs the reader to Figure 2. This is a dilemma, but somehow you must make a ‘sensible’ construction. You could very reasonably explain that the skilled reader would think the words of the claim have the same meaning that they do in the description of Figure 1, with a consequence that the described embodiment is not inside the claim. Alternatively you could explain that the skilled person would at least expect the described embodiment to be within the claim, and thus would understand the words to be restricted to the arrangement shown, where all the teeth of the first group are offset the left, and all the teeth of the second group are offset to the right, and so on. It is also possible to reach a conclusion that the words are broad enough to cover both the arrangement of Figure 1, with strict alternation of the offset of the individual teeth, and also the arrangement of Figure 2, where the teeth of each group have the same offset, successive groups being offset in different directions. The general rule is that the words should be understood to cover the preferred embodiments as described, while possibly additionaly covering other possibilities, unless the language positively excludes this (but recall University of Queensland where ‘before’ was understood to mean ‘after’ so that the claim covered the described embodiment).

Can you appreciate that explaining these ‘delicate’ differences of meaning can pose quite a challenge, as you have to find words which explain the situation, without confusing the reader? Of course, a patent attorney must be able to use words in an accurate way, and FD4 is testing this skill.

Before we leave claim 2, could this claim have a repercussive effect on claim 1? We may come back to this point.

Claim 3 seems non-contentious as the ends of the blade of Figure 2 look just like the ends of the blade of Figure 4.

In claim 4 the ‘clear spaces’ may be a problem. However, in the patent there is no description at all of the spaces 4 in the blade of Figure 2. They are identified as ‘gaps 4’, but then only in an indirect way in a description of the operation of the saw. What must a space have (or not have) to be clear? Will any space that performs the function of the the gap 4 be a ‘clear space’? These are questions you will have to answer to determine whether the gaps 38 with raker teeth 37 are ‘clear spaces’. You might suggest that they are very definite spaces which are clearly visible, and so they are ‘clear’. You might equally suggest that they are ‘obstructed’ by the raker teeth, and so are not ‘clear’. The conclusion you reach will have an effect on whether the claim is infringed or not.

So, the points that really need discussion relate to where the infringement differs from the described embodiment of the invention, and where the claims are poorly drafted.

Are you surprised at how much there is to find and discuss in a short patent and a short set of claims?