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[TataBox]

Can anyone enlighten me as to the interplay between the two concepts?  Both seem to "expand" the reach of claim language.  It seems after Arlington, while there are limiting terms in the spec, they cannot be brought into the claims. Fine.  Further, DOE, to me, seems to expand out the reach of the claim language to structures the satisfy FWR test, that can be of different form or shape.  My question is how different must the structures be to fall out of BRI.

I can think of plenty of examples where the claim language can result in a few structures - some that are not specifically delineated in the spec. but similar. In an example, lets say I have a rim for a wheel with a bolts in it.  The figures illustrate 2 screws in the middle of the rim, but the claims read a "rim for receiving bolts."  If an infringing device uses five bolts does it fall under BRI or DOE.  If the bolts are on the outer circumference, is it BRI or DOE?  In my mind, under the DOE the rim would be fastened by screws, ties or other structured devices not including bolts.

Maybe there is not an interplay and I am off my rocker, but the more CAFC cases I read the more confused I get.

[Isaac]

Can anyone enlighten me as to the interplay between the two concepts?  Both seem to "expand" the reach of claim language.

Broadest reasonable interpretation is applied only in the patent office and then only to claims under examination.  It is only used to invalidate claims and in practice BRI forces the applicant to add more stuff to the claims if the applicant wants them allowed.

On the other hand, the purpose of the DOE is to prevent defendant's from stealing an invention by making minimal, non-inventive changes to what has been claimed.

It seems after Arlington, while there are limiting terms in the spec, they cannot be brought into the claims. Fine.  Further, DOE, to me, seems to expand out the reach of the claim language to structures the satisfy FWR test, that can be of different form or shape.

I think you are overstating Arlington a bit.   Also, the DOE isn't about what's in the specification (at least not directly).   Importing terms narrows the literal scope of the claims, while DOE extends the reach of the claim beyond the literal scope of the claims.

My question is how different must the structures be to fall out of BRI.

I don't think this question makes sense.   BRI does not allow rejecting a claim using structures that are contrary to the words in the claim.   BRI is supposed to mean interpreting claims literally and broadly.

If the bolts are on the outer circumference, is it BRI or DOE?  ...

You are confused.  But this time it is not the fault of the Federal Circuit.

[NJ Patent1]

Tatta:  FWIW, the DOE never, never, never expands the "scope of a claim". Per Isaac "broadest reasonable interpretation" dies in the Office. Scope of a claim is the provence of "claim construction" - a matter of law, right? (n.b. rehearing in Retractable denied Tuesday).  The DOE "merely" expands the "right to exclude" of a claim, never, never claim "scope".  Some CAFC judges are strict on this dogma and rale against expanding the "scope" of a claim under the DOE.  BFD.  I'm adjudicated an infringer, like do I care if I'm in the scope of the claim or "merely" in some "penumbra" of "the zone of right to exclude" around the claim.  Nope.  Get out my wallet and pony-up damages or eat the injunction.  I only mention it bcs, as noted, some CAFC judges get all (verbally) postal on this point.  Unless you know your panel, play it safe and use "expansion of right to exclude", not expansion of "scope" of the claim in ur CAFC appeal briefs.     

[khazzah]

the claims read a "rim for receiving bolts."  If an infringing device uses five bolts does it fall under BRI or DOE.  If the bolts are on the outer circumference, is it BRI or DOE? 

These are really separate questions. One, does the BRI read on a rim with five bolts/rim with bolts on outer circumference, ie, does such a rim teach all the elements. Two, does DoE capture an infringing rim with five bolts/rim with bolts on outer circumference.

The first question is simply an exercise in claim construction using the BRI standard. The plain language of the claim says nothing about the number of bolts, other than that the number is more than 1: "boltS". Nor would a POSITA understand the number to be anything other than "more than 1". Therefore, Yes, a rim receiving 5 bolts anticipates. The plain language also says nothing about the location of the bolts, nor does a POSITA understand the claim to say anything about the location of the bolts. Therefore, Yes, a rim with bolts on the outer circumference anticipates.

The second question -- DoE -- involves analysis after claim construction using the "Phillips" standard (for want of a better moniker).

The first question (BRI) is relevant only during examination. The second question (DoE) is relevant only during an infringement analysis.

[JimIvey]

I'll toss in my two cents, too.

Aside from the procedural difference noted above, BRI is a literal interpretation of the claims and DoE goes beyond the literal bounds of the claim.

During prosecution, claims are interpreted to determine their exact coverage using BRI.  To invalidate a claim with something that doesn't fall within that coverage, you need to use obviousness analysis.

During enforcement, claims are interpreted to determine their exact coverage using NRI (narrowest reasonable interpretation).  To infringe a claim with something that doesn't fall within that coverage, you need to use the DoE.

So, somewhat loosely, you can consider BRI related to 102 and DoE related to 103.

Regards.

[TataBox]

the claims read a "rim for receiving bolts."  If an infringing device uses five bolts does it fall under BRI or DOE.  If the bolts are on the outer circumference, is it BRI or DOE? 

These are really separate questions. One, does the BRI read on a rim with five bolts/rim with bolts on outer circumference, ie, does such a rim teach all the elements. Two, does DoE capture an infringing rim with five bolts/rim with bolts on outer circumference.

The first question is simply an exercise in claim construction using the BRI standard. The plain language of the claim says nothing about the number of bolts, other than that the number is more than 1: "boltS". Nor would a POSITA understand the number to be anything other than "more than 1". Therefore, Yes, a rim receiving 5 bolts anticipates. The plain language also says nothing about the location of the bolts, nor does a POSITA understand the claim to say anything about the location of the bolts. Therefore, Yes, a rim with bolts on the outer circumference anticipates.

The second question -- DoE -- involves analysis after claim construction using the "Phillips" standard (for want of a better moniker).

The first question (BRI) is relevant only during examination. The second question (DoE) is relevant only during an infringement analysis.

Thanks for the responses.  Outside prosecution, I was under the impression when one is looking at an infringing product, analyzing from the literal infringement standpoint, one gives BRI to the claims to determine scope in light of the spec.  The defense is going to try and import limitations and plaintiff is going to try and keep them out.  At some point, a middle point is reached and the accused device is in or out. 

Going to the Rim example, if I have claim wherein the Rim has a plurality of bolts and the figures show one configuration can you figure that claim literally reads on other configurations with a Rim that has a plurality of bolts (as described above) or would you rely on DOE to get you that territory assuming no PHE/Disclaimer issues?

[Isaac]

Outside prosecution, I was under the impression when one is looking at an infringing product, analyzing from the literal infringement standpoint, one gives BRI to the claims to determine scope in light of the spec.

You are probably referring to something other than BRI.  When examiners practice BRI, they typically avoid even peering at the specification.

[TataBox]

Outside prosecution, I was under the impression when one is looking at an infringing product, analyzing from the literal infringement standpoint, one gives BRI to the claims to determine scope in light of the spec.

You are probably referring to something other than BRI.  When examiners practice BRI, they typically avoid even peering at the specification.

Right.  Plain and ordinary meaning (Phillips) is what I meant.  I apologize for the confusion.

[khazzah]

Outside prosecution, I was under the impression when one is looking at an infringing product, analyzing from the literal infringement standpoint, one gives BRI plain and ordinary meaning (as understood by a POSITA) to the claims to determine scope in light of the spec.  The defense is going to try and import limitations and plaintiff is going to try and keep them out.  At some point, a middle point is reached and the accused device is in or out. 

Going to the Rim example, if I have claim wherein the Rim has a plurality of bolts and the figures show one configuration can you figure that claim literally reads on other configurations with a Rim that has a plurality of bolts (as described above) or would you rely on DOE to get you that territory assuming no PHE/Disclaimer issues?

I'm sure you know that the analysis is fact-specific, so your mileage may vary. However, in the hypo you present, under the Philips analysis the literal scope would almost certainly cover 2 bolts, 3 bolts, etc. as well as bolts on the perimeter, bolts toward the center, etc. You certainly don't import the specific-number-of-bolts limitation merely because that's what is shown in the figures.