Anatomy of a PatentClaims and Claim Charts

Infringement

Dr. Tal Lavianhttp://cs.berkeley.edu/~tlavian

tlavian@cs.berkeley.eduUC Berkeley Engineering, CET

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Anatomy of a Patent 2

TitleFiling dateField of SearchReferencesAbstractDrawingsDisclosure (aka Specification)

Background Brief Summary of Invention Brief Description of Drawings Detailed Description of Invention

Claims

INVENTORS

Classification Numbers

TITLE

PRIOR ART

ASSIGNEE

ABSTRACT

Issue date

Filing Date

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Related history

Anatomy of a Patent – Title4

Title Short (<500 characters) Sometimes terse or misleading Usually the wording from an independent claim Example:

Slide-to-unlock patent’s title: “Unlocking a device by performing gestures on an unlock image”

Slide-to-unlock patent’s first independent claim: “A method of unlocking a hand-held device [by continuously moving an unlock image]”

Anatomy of a Patent – Filing Date

Filing date is critical for establishing priority date for prior art Generally, patent can be invalidated by prior art

existing up to one year before the priority date This was important since the U.S. used to be

under first-to-invent system Courts deciding infringement cases would look

to conception and reduction to practice (often filing) dates to determine who invented first

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Anatomy of a Patent – Filing Date (cont.)

Filing date even more important now that U.S. has updated to first-to-file system Means under nearly all circumstances, first

person to file patent is considered proper inventor by the law No more consideration of conception or

reduction to practiceAll other countries have first-to-file system,

as well

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Anatomy of a Patent – Field of Search

Field of Search Numerical classifications to which patent applies or is

cross-referenced These are the PTO numbering schemes, classes and

sub-classes Example: Slide-to-unlock patent classifications include:

715/863: Data processing: presentation processing of document, operator interface processing, and screen saver display processing; gesture-based

345/173: Computer graphics processing and selective visual display systems; touch panel

345/179: Computer graphics processing and selective visual display systems; stylus

Examiners use to locate prior art

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Anatomy of a Patent – References and Abstract

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References Other patents cited in the disclosure Optionally other material

Abstract Brief description of the technical disclosure of the

invention Permits the reader to quickly determine the nature

and gist of the invention. Not relied upon for PTO or legal analysis

However, sometimes used by judges to determine the claimed invention

For this reason, it is often a paraphrase of the first claim (obviates possibility of misinterpretation)

Anatomy of a Patent – Drawings9

Drawings illustrate the invention, at least one required

Typically show the “preferred embodiment” of each element of the invention

May include block diagrams, schematics, flow-charts

Anatomy of a Patent – Drawings (cont.)

Must be drawn according to strict PTO rules Line width, font size, etc. Can be done with Visio or similar drawing

programs Can submit preliminary drawing with initial

applicationand follow up later with final drawings(after first office action)

Good for defending patent claims and fulfilling the enablement requirement (a picture’s worth a thousand words)

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Anatomy of a Patent – Disclosure: Background

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Describes the field of invention Short description of the area invention applies to

Describes the prior art What has been done before and how the present

invention differs or improves upon that Prior art may be from other patents or any other

public source (old magazine articles, technical papers, text books, product literature, etc.)

Explains why the invention is useful Describes problem it solves or improvements it makes

Anatomy of a Patent – Disclosure: Brief Introduction

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Brief summary of the invention Summarizes the specific invention being claimed

(however, must be complete enough not to limit scope of claims)

Brief description of drawings Describes what is shown in each drawing and

identifies the type of drawing (e.g., block diagram, cross section, etc.)

Anatomy of a Patent – Disclosure: Detailed Description

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This is the main description of how the invention works Describes one or more “preferred embodiments” Also mentions other alternatives Defines terms used, which is important for claim

interpretation Must be detailed enough for one skilled in the art to

construct or use the invention (thus fulfilling the enablement requirement)

Usually relies on detailed references to figures

Anatomy of a Patent – Claims14

Most important part of the patent Precisely define the boundaries of the invention Meaning of words, phrases, and punctuation is critical

Court cases often turn on the interpretation of claims (often called “claim construction”) Drafting claims is a sophisticated art. Must be

Narrow enough to exclude all prior art Broad enough to be useful

Applies to many products or variations Hard to design around Able to survive challenges

Anatomy of a Patent – Claims: Two Basic Types

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Independent claims Stand by themselves Comprise a set of limitations (or elements) that define the

scope of an invention Example: Claim 1 - An apparatus for moving objects

consisting of one or more round disks with axles connecting said round disks

Dependent claims Depend on an independent claim or another dependent

claim Add additional limitations (i.e., make more narrow and thus,

more patentable) Example: Claim 2 – Apparatus of Claim 1 wherein the

said axles are affixed to said round disks using aball bearing assembly

Claims

Specification

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Anatomy of a Patent – Claims: Specific Types

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Activity claims: Used for processes, methods, or uses

Example: claim for the method of distributing multimedia across mobile platforms

Referred to as method, process, or use claims

Physical entity claims Used for products (e.g., material) or apparatuses (e.g.,

device, system, or article) Example: claim for a device used to diagnose certain

types of pancreatic cancer Referred to as product or apparatus claims

Summary of Patent Anatomy18

Claims are the key description of inventionDisclosure describes preferred embodiment

(implementation) of invention, defines terminology

Filing date establishes date for considering prior art

Claim Chart

Element-by-element breakdown of a patent’s claims compared to an allegedly infringing product Often used by prosecution for infringement

analysisVery useful for visualizing which aspects of

the claims are read upon by potentially infringing devices

Example: Slide-to-Unlock vs. Samsung Galaxy Tab

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US# 8046721— Slide to Unlock — Claim 1

Slide-to-unlock patent claim 1 Samsung Galaxy Tab

A method of unlocking a hand held electronic device device including a touch sensitive display the method comprising:

(Each of these rows would be filled with Galaxy Nexus features that read upon the claim elements in the opposite column)

detecting a contact with the touch sensitive display at a first predefined location corresponding to an unlock image;

e.g., The Galaxy Nexus has a touch screen that detects contact and which displays unlock images.

continuously moving the unlock image on the touch sensitive display in accordance with movement of the contact while continuous contact with the touch screen is maintained wherein the unlock image is a graphical interactive user interface object with which a user interacts in order to unlock the device; and

e.g., To unlock the Galaxy Nexus, the user must slide her finger across the touch screen, maintaining continuous contact while interacting with the unlock image.

unlocking the hand held electronic device if the moving the unlock image on the touch sensitive display results in movement of the unlock image from the first predefined location to a predefined unlock region on the touch sensitive display.

e.g., Once the user completes sliding the unlock image from the starting point to the ending point on the touch screen, the Galaxy Nexus is unlocked.(To prove infringement, need to show each and every element of a claim.)

Patent Infringement

Most of the time: Scenario:

Company A thinks Company’s B’s product infringes, sues B B has legal counsel perform due diligence, counsel says

“You’ll probably lose.” B agrees to settle with A and either

Stop producing the infringing product License A’s patent in order to continue infringing

Sometimes: Scenario:

Same as above, but B decides to go to court to defend their product

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(Direct) Patent Infringement –Options

A sues B. B decides to take the case to trial. What are B’s options?

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Patent Infringement –Defense: Patent Invalidity

Argue for patent invalidity: Perform prior art search to find prior art to

invalidate the patent claims Can show that A shouldn’t have gotten patent in the first

place Use claim construction to determine the breadth

of the claims Argue that claims are too broad, invalid

Demonstrate inequitable conduct on A’s behalf by providing evidence for clear intent to deceive the Patent Office

Show that A’s patent has expired

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Patent Infringement –Defense: Non-infringing Use

Methods of demonstrating non-infringing use:

Perform an infringement analysis comparing A’s patent claims to B’s product features If not every element of one of A’s patent’s

claims found in B’s product, then not infringing

Prove that B already had a license for A’s patentPerhaps B already licensing A’s technology

from C, in which case no infringement

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Patent Infringement –Uncommon Defenses

Prior user defense Applies only to business method patents If the defendant can prove use of the patented process

at least one year before its application was filed, not infringing Must be an “innocent infringer” i.e., did not know of the

patent

Laches Plaintiff is not allowed to assert patent rights if it can

be shown they delayed enforcement to increase potential damages from defendant

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Patent Infringement – Basics

What does it mean to infringe a patent? Manufacture, import, sell, or offer to sell

patented technology Courts’ test for infringement has two steps:

Analyze the claims to construe their meaning (a.k.a. “claim construction”)

Attempt to apply the claims to the accused infringing product (a.k.a. seeing if the claims “read on” the product’s features)

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Patent Infringement – Doctrine of Equivalents

Doctrine of Equivalents (DoE) – a product may still infringe a patent without directly infringing its claims if it performs substantially the same function in substantially the same way to yield substantially the same result

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Patent Infringement –Doctrine of Equivalents (cont.)

Purpose of DoE is to prevent potential infringers from making insignificant changes to a patented product in order to circumvent the claims

There are exceptions to DoE, which include Reverse Doctrine of Equivalents

Essentially, even if a product directly infringes on a patent’s claims, if it does so in a substantially different way to achieve a substantially different result, then it doesn’t infringe

Example: you invent a method of curing cancer using Edison’s light bulb would not infringe

This defense is very rare

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Patent Infringement –Slide-to-Unlock Hypothetical

Assume Apple sued Samsung for infringing the slide-to-unlock patent with its Galaxy Tab.

First, the court would construe the claim language in a Markman hearing to determine the meaning of key terms

Second, the court would use a claim chart to analyze the degree to which the slide-to-unlock patent’s claim read on the Galaxy Tab’s unlock system

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Slide-to-unlock patent claim 1 Samsung Galaxy Tab

A method of unlocking a hand held electronic device device including a touch sensitive display the method comprising:

(Each of these rows would be filled with Galaxy Tab features that read upon the claim elements in the opposite column)e.g., The Galaxy Tab has a touch screen that detects contact and which displays unlock images.

detecting a contact with the touch sensitive display at a first predefined location corresponding to an unlock image;

The Galaxy Tab has a touch screen that detects contact. Detects contact at the beginning of the unlock inage.

continuously moving the unlock image on the touch sensitive display in accordance with movement of the contact while continuous contact with the touch screen is maintained wherein the unlock image is a graphical interactive user interface object with which a user interacts in order to unlock the device; and

e.g., To unlock the Galaxy Tab, the user must slide her finger across the touch screen, maintaining continuous contact while interacting with the unlock image.

unlocking the hand held electronic device if the moving the unlock image on the touch sensitive display results in movement of the unlock image from the first predefined location to a predefined unlock region on the touch sensitive display.

e.g., Once the user completes sliding the unlock image from the starting point to the ending point on the touch screen, the Galaxy Tab is unlocked.

(To prove infringement, need to show each and every element of a claim.)

Patent Infringement –Slide-to-Unlock Hypothetical (cont.)

The claim chart must clearly indicate that the Galaxy Tab infringes Apple’s patent

What can Samsung do to defend itself?

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Slide-to-Unlock Patent–Prior Art

Prior art listed as other patents under “References Cited”

However, other undiscovered or undisclosed prior art is often revealed in court Example: if Apple sued for slide-to-unlock

infringement in the U.S., defendant (ie, Samsung) might cite Neonode N1m (early smartphone released in 2005) as prior art in an attempt to invalidate patent

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Slide-to-Unlock Patent – Prior Art (cont.)34

Slide-to-unlock function four minutes in

Patent Infringement –Hypothetical Samsung Defense

Samsung could: Try to invalidate the patent with prior art, such as

the Neonode N1m’s unlocking system Argue that the patent’s claims are too broad Look for evidence of inequitable conduct on

Apple’s behalf while filing for the slide-to-unlock patent

Argue that the Galaxy Tab doesn’t include every element of the claims

What do you think would be the result of this case?

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