Recently, I had a patent holder call my office looking for me to do something about a product that he believed infringed his patent. I was probably the 20th person he had called because he seemed to have his arguments ready for me.
YOUR INVENTION IS WHAT IS WRITTEN IN THE CLAIMS
I kept referring him back to the “What is claimed is:” and two numbered claims. For the sake of simplicity, I am going to say his patent claimed 4 elements: A, B, C, and D. The product in question had elements A and C.
Claim 1 was an independent claim that described elements A, B, C, and D. The second claim was a dependent claim. In order to infringe the patent, the product would need all of the elements of Claim 1, the independent claim.
OTHER PARTS OF THE PATENT ARE HELPFUL TO UNDERSTAND THE MEANING OF CLAIMS AND TO PROVE YOU MEET THE PATENT OFFICE REQUIREMENTS FOR PATENTING
“Well, why are all of these other parts in here?” he asked. The figures, abstract, background, detailed description, and list of prior art are all there to show first that what you invented really is new and novel (https://www.uspto.gov/sites/default/files/101_step1_refresher.pdf). Second, you really invented it because you can describe it in detail so that someone else can make it (https://www.uspto.gov/web/offices/pac/mpep/s2163.html and https://www.uspto.gov/web/offices/pac/mpep/s2164.html). Finally, the claims have meaning as shown in the other parts.
THE INVENTOR GOT A PATENT ON ELEMENT C ONLY WHEN USED WITH A, B, and D.
The inventor argued that some of the Figures did not have all of the elements of Claim 1. Particularly one drawing only had A and C. C was the element that concerned the inventor the most. Moreover, C was described separately in the detailed description and numerous other places in the document. He also read a disclaimer that the embodiments in the detailed description were merely examples and should not be read as limiting. He said his attorney told him that he was getting a patent on C for the two or three years that the patent was pending. The inventor did get a patent on C but it was not just C. It was C used with A, B, and D. I felt bad for the guy because no one had explained to him in the beginning that the Claims are your invention and the only thing you can keep others from doing.