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ARTICLE · 01 MARCH 2007

"Essential" Steps From Specification May Limit Scope Of Patent Claims

McDermott Will & Emery
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In construing the scope of a product claim, the U.S. Court of Appeals for the Federal Circuit held that the process for making a product can be within the scope of a product claim when the "patentee makes clear that the process steps are an essential part of the claimed invention."

United StatesIntellectual Property
Matthew Cunningham
Matthew Cunningham
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In construing the scope of a product claim, the U.S. Court of Appeals for the Federal Circuit held that the process for making a product can be within the scope of a product claim when the "patentee makes clear that the process steps are an essential part of the claimed invention." Andersen Corp. v. Fiber Composites, LLC, Case Nos. 05-1434, 06-1009 (Fed. Cir., Jan. 26, 2007) (Bryson, J.).

Andersen asserted two groups of patents related to polymer-wood composites against Fiber Composites. The first group of patents (Group I) claim "composite compositions," which are described in the patents as an intermediate composite materials capable of being extruded into structural parts. The second group of patents (Group II) claim "composite structural members," which are described in the patents as the extruded parts themselves. Fiber Composites contended that these claim terms should be construed to include an intermediate pelletization process that is used to manufacture the composite

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