Have Your Cake and Eat It Too – Obtaining Broad Claims That Define a Device or Apparatus Based on How it Works

Have Your Cake and Eat It Too – Obtaining Broad Claims That Define a Device or Apparatus Based on How it Works

Pros and Cons of Apparatus and Method of Use Claims

Devices or apparatuses can often be protected by using two kinds of patent claims: apparatus and method of use claims. Each approach has its benefits and drawbacks. In general, apparatus claims expand the class of direct infringers relative to method of use claims but are often narrower in scope.

Apparatus claims are directly infringed by those who make, use, and sell the apparatus, which includes competitive manufacturers. That’s a good thing because direct infringement does not require proof of intent or proof of knowledge of the patent.  Typically, a patent holder that makes a patented apparatus wants to pursue claims of direct infringement against competitive apparatus manufacturers. Apparatus claims allow you to do that.

Apparatus claims have their drawbacks, however. They are typically structured by reciting various components and how they interrelate to one another.  Sometimes, the true innovation lies in how an apparatus operates, and claims directed to the specific parts in the specification and how they relate to one another may protect only a limited subset of apparatuses that have the innovative mode of operation.

In contrast, method of use claims allow you to broadly claim the way a device operates without necessarily worrying about the specific parts and how they relate to one another.  The problem is that the direct infringers of a method of use claims are the apparatus customers or end users.  The apparatus manufacturers cannot directly infringe a method of use claim simply by making, selling, offering to sell, or importing an apparatus that is used to perform the claimed method. That does not mean that the manufacturers escape liability. However, their liability is limited to indirect infringement, i.e., contributory infringement or active inducement of infringement.  The difficulty with indirect infringement is that it requires additional proof.  To prove that an apparatus supplier indirectly infringed a method of use patent claim, you first have to prove that a third party used the apparatus to perform the method. You then have to prove that the supplier knew of the patent and either 1) that the supplier intended to cause its customers to infringe the patent (active inducement of infringement), or 2) that the supplier knew its apparatus was especially adapted to perform the patented method of use and that that the apparatus is not a staple of commerce with substantial non-infringing uses (contributory infringement).

As we reported in our January newsletter, inducement of infringement is problematic when trying to block the importation of articles used to infringe a method of use claim via an action at the International Trade Commission.  The Federal Circuit held in Suprema, Inc. v. ITC that the ITC lacks the authority to issue exclusion orders based on active inducement of infringement where the induced acts of direct infringement occur in the United States after importation.  The reasoning of Suprema also suggests that the ITC should lack the authority to block the importation of goods used to contributorily infringe patent claims where the direct infringement occurs post-importation. Thus, for those seeking to block the importation of competitive apparatuses, method of use claims may be inadequate.

Broadly Claiming an Apparatus Based on Its Function

The foregoing suggests something of a conundrum: How do you broadly protect a novel machine or device based on how it works (instead of how it is structured), without limiting the class of direct infringer so as to exclude competitive device manufacturers?  The Federal Circuit recently provided some excellent guidance in In re Giannelli, 739 F.3d 1375 (Fed. Cir. 2014).

In Giannelli, the patent applicant sought to patent a rowing machine.  The novel feature of the machine was that you could pull on the handle from a first position to a second position in a rowing motion that followed a linear path.  To capture this feature, the applicant submitted the following claim:

1.   A row exercise machine comprising an input assembly including a first handle portion adapted to be moved from a first position to a second position by a pulling force exerted by a user on the first handle portion in a rowing motion, the input assembly defining a substantially linear path for the first handle portion from the first position to the second position.  

The Patent Office rejected this claim based on a prior art patent that described a bench press apparatus.  In a bench press, the user pushes the handle from a first position to a second position.  However, the Patent Office took the position that a bench press was capable of being moved from a first position to a second position by applying a pulling force, and therefore, that Giannelli’s claim “read on” the prior art bench press.

Phrases such as “adapted to” and “configured to” are often used by patent lawyers to describe an apparatus in terms of its function. However, the Federal Circuit noted that these phrases can be interpreted in two ways. The first interpretation, and the one adopted by the Patent Office, is that “adapted to” or “configured to” merely mean that the claimed apparatus is capable of operating as described. The second interpretation is that “the claimed machine is designed or constructed to be used” in the claimed manner.  This is the interpretation the Federal Circuit adopted.  They adopted it in this case because Giannelli’s application actually described “how the position of the handles relative to the primary and second lever arms and the resistance mechanism renders them ‘adapted’ to be moved by the user’s pulling force.”

Had Giannelli’s application failed to describe a relationship between the handles and the levers that facilitated pulling in a linear path and a specific mechanism that provided resistance force when the handles were pulled, the Federal Circuit likely would have interpreted “adapted to” to mean “capable of” and agreed with the Patent Office that the rowing machine claim was unpatentable over the bench press prior art. However, because a specific mechanism was described, the Federal Circuit adopted a construction that was narrower, but one that did not require the specific structure in the specification that made the handles pullable against a resistance force.

Using Gianelli to Broadly Claim an Apparatus Based on Its Function

Gianelli suggests that apparatuses can be broadly protected based on their function by describing the apparatus being “adapted to” or “configured to” perform the function if the specification describes at least one specific structure that appears to be designed into the device to provide the function.  Otherwise, the claim may be interpreted broadly to cover any device capable of performing the function, regardless of whether any particular features were designed into it to facilitate performance of the function. Thus, it is important that the inventor provide a clear understanding of what structures are used to perform the function and how they cooperate with one another to perform it.

Using this strategy, claims can be drafted that will include competitive device manufacturers in the class of direct infringers without specific structural features that would render the claims undesirably narrow and easy to design around.

In Contrast Means-Plus-Function Limitations Provide Narrow Structural Protection

The claim strategy in Gianelli stands in stark contrast to the use of “means-plus-function” claim limitations.  The Patent Statute provides that features of apparatus claims may be described based on their function using means-plus-function limitations. Thus, Gianelli could have drafted his claim to read “a means for moving the first handle portion from a first position to a second position by a pulling force.” To the uninitiated, this sounds like a viable strategy for broadly describing an apparatus based on its function.However, that is not the case. 

By statute, means-plus-function limitations are limited to the specific structures that are described in the specification (and their structural equivalents) which perform the claimed function.  The irony is that while they facially appear to provide broad functional protection, means-plus-function limitations actually provide narrow structural protection.  Thus, the strategy suggested by Gianelli reaps the rewards and avoids the drawbacks of means-plus-function claiming.

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