Upload
alban-carpenter
View
213
Download
1
Tags:
Embed Size (px)
Citation preview
Patent Innovations-Berkeley-Lavian
4th week 1
Patent EngineeringIEOR 190G
CET: Center for Entrepreneurship &Technology
4th Week
Dr. Tal Lavian(408)-209-9112
[email protected] 225A Bechtel
Mondays 4:00-5:45
Patent Innovations-Berkeley-Lavian
4th week 2
Students Presentations
• Students’ presentations• Topics on patent engineering in litigated
cases
• Some examples from last semester: http://www.cs.berkeley.edu/~tlavian/spring2008/patentEngineering.html
Patent Innovations-Berkeley-Lavian
4th week 3
Students Feedback
•
Patent Innovations-Berkeley-Lavian
4th week 4
Project with Law School
• 3 units is ok
• iPod screed
• Work with the law school
• Ted Schilelman
• Potential $50,000 for prior art
Patent Innovations-Berkeley-Lavian
4th week 5
Students Presentations • Present in 10-15 min a patent litigation case • Case summary
• Parties, dates, history, issue in dispute, results
• Engineering aspects of the dispute• The patent(s), technology, product• Engineering aspects of the infringement • The engineering view vs. the legal view
• Any proposed design around
• The iPod touch screen patent – Need 4 volunteers
PatentEng-Berkeley-Lavian 4th week 6
What is a Patent? (Cont.)
• Right to Exclude the Making, Using, Selling , Offering for Sale or Importation of a Specified Invention– Limited Time (Typically 20 Years from date
of filing with USPTO)– Limited Geographic Territory (issuing
country)• Monopoly awarded by the Government for
sharing the Invention with the public
PatentEng-Berkeley-Lavian 4th week 7
Protecting the Idea
• Protecting the idea, not the embodiment
• Allowed to claim broader than the physical embodiment
• Protection:– Limited rights during the life of the patent
• Filing to end• Issue to end
PatentEng-Berkeley-Lavian 4th week 8
What can be patented?• “Everything under the sun made by man.”
– Products: things– Processes: ways to make things– Methods: ways to do things– Improvements: better things
• Defined Classes– Article of Manufacture– Machine– Composition– Process
• Some more:– Business Methods – Services – Software
PatentEng-Berkeley-Lavian 4th week 9
Criteria – Legal Standards• Novelty
– Does not exist in the prior art– Not previously disclosed to public– OK if Modification/Improvement of an existing product/process, or use of something “old” in new/different way
• Usefulness - Utility - Performs a useful function• Non-obviousness
– Non-trivial - It would not have been obvious to one skilled in the art to combine multiple items in the public domain to arrive at or show the invention – Not Engineer’s normal sense of “obviousness”!
• Enabled
PatentEng-Berkeley-Lavian 4th week 10
What Is Not Patentable
• Laws of nature (wind, gravity)• Physical phenomena (sand, water)• Abstract ideas (mathematics, a
philosophy) – Algorithms per se
• Anything not useful, Novel and Non-Obvious (perpetual motion machine)
• Inventions which are offensive to public morality or designed for an illegal activity
PatentEng-Berkeley-Lavian 4th week 12
Statutory Bars
• Patent rights to an invention will be lost if:– The invention is used publicly– The invention is sold or offered for sale– The invention is published in a printed
publication or a patent – Before the filing of a patent application
• (more than one year in U.S.)
PatentEng-Berkeley-Lavian 4th week 13
Prior Art
• Information prior to the date of a patent application
• Existing relevant technology
• Can be your own technology or acts
PatentEng-Berkeley-Lavian 4th week 14
Foreign Standards fro Prior Art
• “Absolute novelty” • The invention must not have been disclosed
or available to the public at any time before the filing of the application
PatentEng-Berkeley-Lavian 4th week 18
Utility Patents
• What is patentable?
• New and useful…– Process– Machine– Manufacture– Composition of matter– Improvements
• What is unpatentable?– Prior existing technology
PatentEng-Berkeley-Lavian 4th week 19
Utility Patent Types
• Two types of US Utility Patents– Provisional application– Non-Provisional application
• Continuation• Divisional• CIP• PCT International
PatentEng-Berkeley-Lavian 4th week 20
Other Types of Patents
• Design Patents: are issued for– Novel, non-obvious – Ornamental design in an article of
manufacture – In other words, for its appearance– The term of a design patent is 14 years
from the date of grant
• Plant Patent– new or discovered asexually reproduced
plant
PatentEng-Berkeley-Lavian 4th week 21
Types of Patents
Type Is for Term #s
Utility Function, use
20 years 6,214,874
Design Appearance 14 years D202,331
Plant Asexually reproduced
20 years PP10123
Patent Presetnation 22
Who is an Inventor?
• a person who alone or in conjunction with others makes a material contribution to the conception of an invention (conceived the idea)
• a person who reduces the conception to practice if it requires extraordinary skill
• Non-Inventors: – Persons who implement the ideas of others– Persons who have obtained the entire idea of an
invention from another are not inventors– Persons who suggest concepts without contributing to
the means for carrying out the suggestion (“Wouldn’t it be nice if….”)
Patent Presetnation Confidential 23
INVENTORS
CLASSIFICATIONNUMBERS
PRIOR ART REFERENCES
TITLE
ABSTRACT
PRIOR ARTCONTINUED
ASSIGNEE
Patent Presetnation Confidential 24
CLAIMS
SPECIFICATION
Patent Presetnation 25
The Golden Age of Patents
• Presumption of validity strong
• Large verdicts / settlements abound
• Federal Circuit is unpredictable
• Threat of injection is real
Patent Presetnation Confidential 26
Identify Key Features of Product
• Ensure “freedom to operate” for those key features likely to be developed by others
Identify Concepts Having Licensing Potential, For Example:
• Those that may or will be included in an industry standard
• Those that are likely to be used by third parties
• Those that are unlikely to be a product differentiators
• Those that are outside core business
Identify Solutions Having Defensive Potential
• Those solutions that read on key competitor’s products and/or services (even if we do not plan on using / commercializing them)
Invent the Future!• One fundamental patent can support an organization for up to 20
years!
Developing a Patent Filing Strategy
Patent Presetnation 27
First to File• Many jurisdictions award patents to the first to file an
application for the invention (and the US is moving in this direction)
Earliest Inventions Most Valuable• Broadest concepts are the most valuable. One should
not, therefore, delay filing simply because unrealized improvements envisioned
No Need to Test Invention or Build Prototype• There is no requirement to prove that an invention works
in order to obtain a patent• A patent must merely provide instructions for one of skill in
the art to practice the invention without undue experimentation
When to Disclose
Patent Presetnation 28
Invention = A New Solution to a Problem• Categories of Inventions
• Articles of Manufacture, Machines, Compositions and Processes
• Only need a single difference over the prior art
• Can include business methods and services
• New Uses for Known Articles of Manufacture, Machines, Compositions and Processes
• Test for Novelty – Same thing, used in same way, for same purpose
• Improvements
• Even if based on invention patented by another
• Software
Patent Presetnation 29
Assessing Value – Influential Factors
• Likelihood of third parties using the solution (now or in the future)
• Demand for the solution (cost reduction and/or new feature)
• Whether “base invention” patented (fundamental v. improvement)
• Key enabling / lynchpin solution
• Whether the invention is of general applicability
• Whether the invention is useful to a key competitor
Patent Presetnation 30
Assessing Value – Influential Factors
cont’
• Breadth of the solution (available alternatives)
• Likelihood of solution being an essential feature of an industry standard
• Whether infringement is detectable
• Whether invention outside core industry
• Simplicity of solution
• Importance of innovation to future company products and / or services
Patent Presetnation 31
Assessing Novelty
• Determine broadest invention• Determine major problems solved and technical
means for doing so• Identify closest known prior art• Determine broadest inventive concepts• Recall: Consider functionality and problem solved• If structure known, consider whether elements used
in new way?• If function also known, consider whether new
problem solved?
Patent Presetnation 32
What inventions are important? • Inventions are evaluated on three key criteria:
– Strategic thrust or importance to the company or competitors
• Is the invention related to parts of the business that we believe will have long term importance?
– Inventive value• How significant is the invention? Minor improvement
or new technology?• Is it the basis for a standard?
– Commercial value• How much money can we charge others to use the
invention?
Patent Presetnation 33
Promote Innovation• Strengthen corporate community by focusing
upon internal networking and information sharing• Augment sources of innovation by promoting an
environment of creativity– Create a simple and supportive environment that builds
on ideas heard from any employee and encouragement/mentorship by subject matter experts
• Supplement corporate strategy - what exists beyond Transformation - by discovering ideas to invest in now for the future
Patent Presetnation 34
How Can A Patent Provide Business Value?
• Can exclude others from using Company innovations• Can be licensed for income• Can be utilized for other business value (e.g. cross-
licensing, if appropriate)• Can be used defensively to avoid or deter litigation• Can enable “freedom to operate”• Demonstrates technology leadership
• Business Value/Return on R&D Business Value/Return on R&D InvestmentInvestment
35
Aro Top1964 – repair v reconstruction
City of Elizabeth1878 – experimental use
Chakrabarty1980 – patentable subject matter
DSU v. JMS *2006 – inducing infringement
eBay2006 – permanent injunctions
Egbert1881 - experimental use
All Supreme Court except *
Major Cases
36
Festo2002 – pros.history estoppel
Graver Tank [Graver Mfg v Linde]1950 – doctrine of equivalents
Graham v. Deere1966 – obviousness
Gurley *1994 – teaching away
Harvard Mouse [Canada]2002 - patentable subject matter
Knorr-Bremse*2004 - willfulness
KSR 2007 – obviousness
All Supreme Court except *
Major Cases
37
Markman1994 – claim construction
Monsanto (Canadian) *2004 – plants
Parker v Flook1978 – patentable subject matter
Seagate1994 – teaching away
State Street *1998 – patentable subject matter
Westinghouse v Boyden Brake 1898 – reverse DOE
All Supreme Court except *
Major Cases
38
CLAIMS
Claims- define the legal effect of the patent- new VERB: READ ON
if a claim READS ON the prior artthey are INVALID
if a claim READS ON an accused device, the device INFRINGES the claim
39
CLAIMS
Claims define the legal effect of the patent
Learn a new VERB: READ ON- if a claim READS ON the prior art,
the claim is INVALID
- if a claim READS ON an accused device, the device INFRINGES the claim
40
Liability ≈ Validity & Infringement
In ANY IP case (copyright, trademark, trade secret), the liability questions are:
IS IT VALID?IS IT INFRINGED?
What the “it” is will vary, of course.What makes an“it” valid is different, too.So: What is the “it” in a patent case?
41
Liability ≈ Validity & Infringement
Given what the IT is in a patent case,what is the key to deciding BOTH validity and infringement?
How is resolved in many patent trials?
It’s the CLAIMS, stupid.
A Markman hearing.For the JUDGE alone, even if there will later be a JURY trial.
CLAIM CONSTRUCTION
42
VocabularyREAD ONPrior Art
Ways to Demonstrate Invalidity ~ ISSUESAnticipationObviousnessIndefinitenessfailing to provide an adequate Written DescriptionEnablement / failure to EnableBest Mode / failure to disclose the Best Mode
Red = terms of art or ISSUES
Black = correct wording for the phrase: the claim was found invalid for _________
Validity – or rather INVALIDITY
43
AnticipationObviousnessIndefinitenessWritten DescriptionEnablement Best Mode
primarily
primarily
(In)Validity
Which issues involve the CLAIMS,
Which the SPECIFICATION?
44
Depends on what is in the PRIOR ART.How do those 2 differ?
1. HOW MUCH ART?2. What other things matter, besides the art and
what it DISCLOSES?
Anticipation and Obviousness
45
Anticipation and Obviousness
1. How much art?Anticipation: A single piece of prior
art is ON ALL FOURS. The claim READS ON this single reference.
Obviousness: Usually more than one reference, but could be one reference PLUS the knowledge of the PERSON OF ORDINARY SKILL IN THE ART.
46
Anticipation and Obviousness
2. What else matters besides <Prior Art>?Anticipation: NOTHING. Except that the
single piece of Prior Art must ENABLE at least as well as the patent does.
Obviousness: LOTS.The PRIMARY CONSIDERATIONS.
(really not much beyond the p.a., but there’s a formula for them, from the statute and from court decisions)
The SECONDARY CONSIDERATIONS
Guess which one Accused Infringers prefer to use to challenge a patent?What about Patent Owners?
PatentEng-Berkeley-Lavian 4th week 47
Types of Patents
Type Is for Term #s
Utility Function, use
20 years 6,214,874
Design Appearance 14 years D202,331
Plant Asexually reproduced
20 years PP10123