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Patent Writing

Michael I. Shamos, Ph.D., J.D.Institute for Software Research International

Carnegie Mellon University

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Outline

• What is a patent?• The parts of a patent: specification and claims• Obtaining a patent: “new, useful and non-obvious”• Patent litigation• Claim term interpretation• The importance of precision

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What Is a Patent?

• A grant to the inventor of a legal monopoly -- the right to stop people from making, using, selling or importing the invention

• The monopoly is based on a tradeoff – the inventor must tell how to make and use the invention

• The monopoly is for a limited time: 20 years from the date of application

• The patent document must define the invention so that an infringer will have fair notice of what is covered

• This is done in words. It’s a difficult writing chore.

• Infringement is determined by reading the claim “on” the accused device

• If the claim “reads on” prior art, the claim is invalid

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Patent Structure

• Specification– Teaches people skilled in the art how to practice

the invention– Includes drawings

• Claims– Give fair legal warning as to what is protected by

the patent

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Drawings of Olson ’227

FIG. 1

FIG. 2

FIG. 3

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Claims of Olson ’227

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What is Patentable?

“Whoever invents or discovers any new and useful

1. process,

2. machine,

3. manufacture, or

4. composition of matter,or

5. any new and useful improvement thereof,

may obtain a patent therefor …”

35 U.S.C. §101

If none of these 5, it’s not patentable.

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Extra Requirement of Non-Obviousness

“A patent may not be obtained … if the ... subject matter as a whole

would have been obvious

at the time the invention was made

to a person having ordinary skill in the art

to which said subject matter pertains.”

35 U.S.C. §103

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Inventions and Prior Art

OBVIOUSBASED ONPRIOR ART

PRIORART

VALID PATENT

INVALID(ANTICIPATION) INVALID

(OBVIOUSNESS)

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What’s Obvious?

• Conventional transformations and operations on objects:

• “Negative rules of invention”– changing size– substituting a new material – making an apparatus portable– new use for old apparatus– omitting parts, moving parts around

• Combining references– if the invention is obvious in light of more than one

prior art reference, need “suggestion to combine”

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The Patent Application

• A patent application is essentially a research paper describing and claiming the invention

• Prepared by a patent attorney• Evaluated by one of 4000 patent examiners in the

U.S. Patent Office to determine– does the application satisfy requirements?– does the invention qualify for a patent?

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Patent Prosecution• Adversarial process with the Patent Office after the

application is filed• Back-and-forth by correspondence with the Examiner• Almost all claims are rejected initially• Applicant may amend the application but:

– no “new matter” may be added– any changes to the claims must be supported by the

specification

• All the correspondence forms the “prosecution history,” which becomes public if the patent is granted

• The prosecution history alters the meaning of words

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Top 10 Patent Companies

Preliminary Rank in 2005

Preliminary Number of Patents in

2005 Organization(Final Rank in

2004)

(Final Number of Patents in

2004)

1 2,941 IBM (1) (3,248)

2 1,828 Canon (3) (1,805)

3 1,797 Hewlett-Packard

(4) (1,775)

4 1,688 Matsushita (2) (1,934)

5 1,641 Samsung (6) (1,604)

6 1,561 Micron (5) (1,760)

7 1,549 Intel (7) (1,601)

8 1,271 Hitachi (8) (1,513)

9 1,258 Toshiba (9) (1,311)

10 1,154 Fujitsu (11) (1,296)

SOURCE: US PATENT OFFICE

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The Law on Clarity

• Specification– shall contain a written description of the invention– the manner and process of making and using it– in such full, clear, concise, and exact terms as

to enable any person skilled in the art to which it pertains … to make and use the [invention]

• Claims– specification shall conclude with one or more

claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention

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Claim Syntax

• Every claim, not matter how long, must be a single sentence with one period

• A claim begins with a preamble defining the technical environment

– “A computer program for compiling code, …

• Followed by a transitional phrase, e.g. “comprising”• Followed by a list of elements or process steps• Many rules, e.g.:

– every noun introduced by “the” must have an antecedent– each claim must claim exactly one of the five types of

invention

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Lack of Antecedent

• “A container for liquids comprising: a jar; and a circular lid on the top of the jar.”

• “Top” has no antecedent. The claim is indefinite.• Proper form:• “A container for liquids comprising:

a jar having a top; and a circular lid on the top of the jar.”

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Lack of Antecedent

27. A method for providing electronic commerce, comprising the

steps of:

(a) transmitting a transaction for an item from an originator to a

recipient, the purchase order including an originator identifier;

(b) associating a unique transaction identifier with the transaction

order;

(c) transmitting a first verification request including the unique

transaction identifier from the recipient to a transaction

administrator to verify the originator identifier;

transmitting the unique transaction number from the transaction

administrator to the originator; …

U.S. Pat. 5,903,878, asserted against Visa

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Lack of Antecedent

27. A method for providing electronic commerce, comprising the

steps of:

(a) transmitting a transaction for an item from an originator to a

recipient, the purchase order including an originator identifier;

(b) associating a unique transaction identifier with the

transaction order;

(c) transmitting a first verification request including the unique

transaction identifier from the recipient to a transaction

administrator to verify the originator identifier;

transmitting the unique transaction number from the transaction

administrator to the originator; …

U.S. Pat. 5,903,878, asserted against Visa

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Reserved Words

• Comprising– “including at least”– “comprising A+B” includes A+B+C

• Consisting of– “including exactly” (and no more)– “consisting of A+B” does not include A+B+C

• Consisting essentially of– “excluding additional unspecified elements which would

affect the basic and novel characteristics of the product defined in the balance of the claim.”

– “consisting essentially of A+B” includes A+B+C if C does not affect the result

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What does “having” mean?

• A chair having four legs– Can it have five?

• A chair having at least four legs– Can clearly have five

• Meaning depends on the specific facts of the case

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What does “about” mean?

• Ordinarily, it means “approximately”• But: meaning can depend on the specific facts of the

case• Sometimes the word “about” is defined in the patent• From U.S. patent 6,306,403: “ ‘About’ means

approximately or nearly and in the context of a numerical value or range set forth herein means +-0.10% of the numerical value or range recited or claimed.”

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Plain Meaning

• Words of a claim have their “plain meaning” to those of ordinary skill in the art unless the specification and prosecution indicate otherwise

• Example:

“heating the resulting batter-coated dough to a temperature in the range of about 400oF to 850oF”

• Requires heating the dough to that temperature, not the air in the oven

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Errors By the Patent Office

• “Whenever a mistake in a patent, incurred through the fault of the Patent and Trademark Office, is clearly disclosed by the records of the Office, the Director may issue a certificate of correction stating the fact and nature of such mistake … to be recorded in the records of patents.” 35 U.S.C. §254

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Correcting Errors

• “Whenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall … reissue the patent for the invention disclosed in the original patent.”

• “No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent.” 35 U.S.C. §251

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Effect of Reissue

“A reissued patent shall not abridge or affect the right of any person or that person's successors in business who, prior to the grant of a reissue, made, purchased, offered to sell, or used within the United States, or imported into the United States, anything patented by the reissued patent.” 35 U.S.C. §252

Ability of a Court to Correct “Errors”

• A court can correct a typographical error in a patent if

– the error is apparent from the face of the patent; and

– there is no ambiguity over the proper correction

• Otherwise, the court cannot rewrite the claim

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Patent Litigation

• File suit• Plaintiff must detail infringement contentions

– How each asserted claim reads on the accused process

• Defendant must detail invalidity contentions– Why asserted claims are invalid, e.g. found in the prior art

• Markman claim construction proceeding• Pre-trial motions on invalidity and infringement• Trial, usually by jury• Appeal to the Court of Appeals for the Federal Circuit

Usually takes at least 2 years, costs > $ 1million

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Faulty Claims

• Claim is not supported by the specification (invention not enabled)

• Claim is indefinite (does not distinctly claim the invention)– “such as,” “for example,” “or the like”

• Lack of antecedent basis• Each claim must claim exactly one of the five types of

invention

Burnett ’280 Figure 6

Burnett ’280 Claim 1

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Patent Infringement

• A patent may have many claims• Each claim is its own mini-patent; can be infringed

separately• A patent is infringed if any claim is infringed• The “all-elements” rule: a claim is infringed only if

every element in the claim is present in the accused device, arranged as in the claim

• If any element is missing, there is no infringement

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Claim Interpretation

• Since the words of the claim determine infringement, huge amounts of money ride on their meaning

• The meaning of a claim is a matter of law, not fact. Determined by the judge, not a jury

• Patentee may be his own lexicographer– Can define “black” to mean “white” if he wants

• Otherwise, terms have their “plain meaning to those of ordinary skill in the art”

• Interpreting claim terms follows a “Markman hearing,” in which the parties present competing interpretations

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Claim Interpretation

• The patent owner wants an interpretation that makes infringement easy to prove, but does not make the claim invalid

• The defendant wants an interpretation that avoids infringement and/or makes the claim invalid

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Hair ’573 Figure 1

MUSIC SERVER USER SYSTEM

Hair U.S. Pat. 5,191,5731. A method for transmitting a desired digital audio signal stored on a first memory of a first party to a second memory of a second party comprising the steps of: (a) transferring money electronically via a telecommunication lien to the first party at a location remote from the second memory and controlling use of the first memory from the second party financially distinct from the first party, said second party controlling use and in possession of the second memory; (b) connecting electronically via a telecommunications line the first memory with the second memory such that the desired digital audio signal can pass therebetween; (c) transmitting the desired digital audio signal from the first memory with a transmitter in control and possession of the first party to a receiver having the second memory at a location determined by the second party, said receiver in possession and control of the second party; and (d) storing the digital signal in the second memory.

• What’s a “lien”?• What’s a “digital audio signal”?• Does it include MIDI?

Patent Claims1. In an electronic kiosk system having a plurality of interactive electronic kiosks for displaying information provided by a plurality of information providers, a method for defining custom interface screens …, said method comprising the steps of:

…

providing a plurality of pre-defined interface screen element types, each element type defining a form of element available for presentation on said custom interface screens, wherein each said element type permits limited variation in its on-screen characteristics in conformity with a desired uniform and aesthetically pleasing look and feel for said interface screens on all kiosks of said kiosk system … U.S. Pat. 6,014,137

Entire patent invalid for indefiniteness of the phrase “aesthetically pleasing.” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342 (CAFC 2004)

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Patent ClaimsApparatus claims cover what a device is, not what a device does1. A communication system comprising:

(a) a transmission system at a first location in data communication with a reception system at a second location, wherein said transmission system comprises a sequence encoder, an identification encoder, and a compressed data library in data communication with said identification encoder, wherein said identification encoder gives items in said compressed data library a unique identification code; …

Invalid for indefiniteness of “identification encoder.” Acacia v. New Destiny, Case C05-01114 (N.D. Cal. 2005)

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QA&

Balasubramanian ’209 Fig. 2

Balasubramanian ’209 Claims 1-4