How are product-by-process claims treated in infringement cases?
The treatment of product-by-process claims in infringement cases differs from their treatment during patent examination. MPEP 2113 states:
“The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979)”
However, in infringement cases, the Federal Circuit has held that the process steps in a product-by-process claim are part of the claim limitations. This means that to prove infringement, a patentee must show that the accused product was made by the claimed process, not just that it has the same structure as the claimed product.
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