Patent Innovations- Berkeley-Lavian 4th week 1 Patent Innovations and Strategy for Engineers and Entrepreneurs IEOR 190G CET: Center for Entrepreneurship

Patent Innovations-Berkeley-Lavian

4th week 1

Patent Innovations and Strategy for Engineers and Entrepreneurs

IEOR 190GCET: Center for Entrepreneurship

&Technology 4th Week

Dr. Tal Lavian(408) 209-9112

[email protected] 225A Bechtel

Mondays 4:00-5:45


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

http://www.cs.berkeley.edu/~tlavian/spring2008/patentEngineering.html


4th week 3

Students Feedback

• Who is presenting today?


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


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


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


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


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


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


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.)


Prior Art

• Information prior to the date of a patent application

• Existing relevant technology

• Can be your own technology or acts


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


Utility Patents

• What is patentable?

• New and useful…– Process– Machine– Manufacture– Composition of matter– Improvements

• What is unpatentable?– Prior existing technology


Utility Patent Types

• Two types of US Utility Patents– Provisional application– Non-Provisional application

• Continuation• Divisional• CIP• PCT International


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


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


CLAIMS

SPECIFICATION


The Golden Age of Patents

• Presumption of validity strong

• Large verdicts / settlements abound

• Federal Circuit is unpredictable

• Threat of injection is real


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


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


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


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


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


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?


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?


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


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


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


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


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


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?


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

Documents

Patent Innovations- Berkeley-Lavian 4th week 1 Patent Innovations and Strategy for Engineers and Entrepreneurs IEOR 190G CET: Center for Entrepreneurship