PatentEng-Berkeley-Lavian Week 6: Validity and Infringement 1 Patent Engineering IEOR 190G CET: Center for Entrepreneurship &Technology Week 6 Dr. Tal

PatentEng-Berkeley-Lavian Week 6: Validity and Infringement 1

Patent EngineeringIEOR 190G

CET: Center for Entrepreneurship &Technology

Week 6

Dr. Tal Lavian(408) 209-9112

[email protected]

321 HavilandMondays 4:00-6:00


INVENTORS

CLASSIFICATIONNUMBERS

PRIOR ART REFERENCES

TITLE

ABSTRACT

PRIOR ARTCONTINUED

ASSIGNEE


CLAIMS

SPECIFICATION


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

5

Claims & Elements I

• Patent must contain at least one claim• Usually contains several claims

– Claims are numbered and clearly distinct• Infringement of single claim is sufficient for infringement

– Need not infringe two or all claims• Each claim usually contains several elements

– Infringement requires correspondence between each element of a claim and an element of the allegedly infringing product or process

– In literal infringement, the correspondence is exact• Accused device or process has element exactly matching

description in a patent claim– In doctrine of equivalents infringement, correspondence is not

exact, but elements are “similar” and “equivalent”• Elements in patent and accused device or process perform the

same function in the same way to achieve the same result

PatentEng-Berkeley-Lavian Week 6: Validity and Infringement

Two Basic Types of Claims1. 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.

2. Dependent Claims Depend on an independent claim or another dependent claim Add additional limitations Example: Claim 2 – Apparatus of Claim 1 where the said

axles are affixed to said round disks using a ball bearing assembly.

PatentEng-Berkeley-Lavian 6Week 6: Validity and Infringement

Claim scope

• Independent claims define patent scope• Dependent claims are fallbacks

– prior art


8

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


9

Liability ≈ Validity & Infringement

In ANY IP case (copyright, trademark, trade secret), the liability questions are:

IS IT VALID?IS IT INFRINGED?

The “it” is will vary, of course.What makes an “it” valid is different, too.So: What is the “it” in a patent case?


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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


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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


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AnticipationObviousnessIndefinitenessWritten DescriptionEnablement Best Mode

(In)Validity

Which issues involve the CLAIMS?

Which issues involve the SPECIFICATION?


primarily

primarily

Mechanics of Claim Construction

• Claims Chart– Claims– Specification– File History

• Claim Paragraphs• Support in The Specification

Copyright 2001: The Schwegman Institute Opinion Seminar Series


Literal Infringement Analysis

• Applying the Properly Construed Claims to the Accused Product or Process

• The question of infringement is a question of fact for a jury

• Each and every element must read on the accused device

• Each claim stands on its own• Means-Plus-Function claims, the accused device must

perform the identical function required by the claim limitation, and must have identical or equivalent structure to that disclosed in the specification



Mechanics of Claim Comparison

• Claims Comparison Chart

• Copying

• Public Notice

• Ambiguous/Vague Claims



16

Doctrine of Equivalents

• Patent drafting is extremely difficult– Nearly impossible to described invention in a way

the does not leave room for inventor of ordinary skill to copy invention with “insubstantial differences” that would avoid literal infringement

• If patent infringement were so easy to avoid, patents would be nearly worthless and would fail to provide incentive for invention

• Doctrine of equivalents intended to ensure that patents cannot be easily evaded


Reverse Doctrine of Equivalents

• Literal Infringement—The Doctrine in Reverse• Occurs when all the claim elements of an asserted patent are

“literally” found in the accused device• May, nevertheless not infringe if the product or process the

product or process is so far changed in principle from a patented article that if performs the same or similar function in a substantially different way

• One should return to the specification and claim interpretation to clearly articulate the substantiality of these differences



Infringement under Doctrine of Equivalents

• Equitable Doctrine• Affords protection to inventions where a product avoids the

literal language of the claim by making a noncritical change• Each element contained in a patent claim is deemed material to

defining the scope of the patented invention• Determine if the differences between the elements of the

claimed invention and the suspect infringing device or process are “insubstantial”

• Question of Fact



Documents

PatentEng-Berkeley-Lavian Week 6: Validity and Infringement 1 Patent Engineering IEOR 190G CET: Center for Entrepreneurship &Technology Week 6 Dr. Tal