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Anatomy of a Patent Claims and Claim Charts Infringement
Anatomy of a Patent Claims and Claim Charts Infringement
Anatomy of a Patent
Anatomy of a Patent
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3
Anatomy of a Patent  Title
Anatomy of a Patent Title
Anatomy of a Patent  Filing Date
Anatomy of a Patent Filing Date
Anatomy of a Patent  Filing Date (cont
Anatomy of a Patent Filing Date (cont
Anatomy of a Patent  Field of Search
Anatomy of a Patent Field of Search
Anatomy of a Patent  References and Abstract
Anatomy of a Patent References and Abstract
Anatomy of a Patent  Drawings
Anatomy of a Patent Drawings
Anatomy of a Patent  Drawings (cont
Anatomy of a Patent Drawings (cont
Anatomy of a Patent  Disclosure: Background
Anatomy of a Patent Disclosure: Background
Anatomy of a Patent  Disclosure: Brief Introduction
Anatomy of a Patent Disclosure: Brief Introduction
Anatomy of a Patent  Disclosure: Detailed Description
Anatomy of a Patent Disclosure: Detailed Description
Anatomy of a Patent  Claims
Anatomy of a Patent Claims
Anatomy of a Patent  Claims: Two Basic Types
Anatomy of a Patent Claims: Two Basic Types
Claims
Claims
Anatomy of a Patent  Claims: Specific Types
Anatomy of a Patent Claims: Specific Types
Summary of Patent Anatomy
Summary of Patent Anatomy
Claim Chart
Claim Chart
US# 8046721 Slide to Unlock  Claim 1
US# 8046721 Slide to Unlock Claim 1
Slide-to-unlock patent claim 1
Slide-to-unlock patent claim 1
Patent Infringement
Patent Infringement
(Direct) Patent Infringement  Options
(Direct) Patent Infringement Options
Patent Infringement  Defense: Patent Invalidity
Patent Infringement Defense: Patent Invalidity
Patent Infringement  Defense: Non-infringing Use
Patent Infringement Defense: Non-infringing Use
Patent Infringement  Uncommon Defenses
Patent Infringement Uncommon Defenses
Patent Infringement  Basics
Patent Infringement Basics
Patent Infringement  Doctrine of Equivalents
Patent Infringement Doctrine of Equivalents
Patent Infringement  Doctrine of Equivalents (cont
Patent Infringement Doctrine of Equivalents (cont
Patent Infringement  Slide-to-Unlock Hypothetical
Patent Infringement Slide-to-Unlock Hypothetical
Slide-to-unlock patent claim 1
Slide-to-unlock patent claim 1
Patent Infringement  Slide-to-Unlock Hypothetical (cont
Patent Infringement Slide-to-Unlock Hypothetical (cont
Slide-to-Unlock PatentPrior Art
Slide-to-Unlock PatentPrior Art
Slide-to-Unlock Patent  Prior Art (cont
Slide-to-Unlock Patent Prior Art (cont
Patent Infringement  Hypothetical Samsung Defense
Patent Infringement Hypothetical Samsung Defense

: Anatomy of a Patent Claims and Claim Charts Infringement. : Phillip Arredondo. : Anatomy of a Patent Claims and Claim Charts Infringement.ppt. zip-: 973 .

Anatomy of a Patent Claims and Claim Charts Infringement

Anatomy of a Patent Claims and Claim Charts Infringement.ppt
1 Anatomy of a Patent Claims and Claim Charts Infringement

Anatomy of a Patent Claims and Claim Charts Infringement

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Dr. Tal Lavian http://cs.berkeley.edu/~tlavian tlavian@cs.berkeley.edu UC Berkeley Engineering, CET

2 Anatomy of a Patent

Anatomy of a Patent

Title Filing date Field of Search References Abstract Drawings Disclosure (aka Specification) Background Brief Summary of Invention Brief Description of Drawings Detailed Description of Invention Claims

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ABSTRACT

TITLE

Issue date

ASSIGNEE

Filing Date

Related history

Classification Numbers

INVENTORS

PRIOR ART

4 Anatomy of a Patent  Title

Anatomy of a Patent Title

Title Short (<500 characters)? Sometimes terse or misleading Usually the wording from an independent claim Example: Slide-to-unlock patents title: Unlocking a device by performing gestures on an unlock image Slide-to-unlock patents first independent claim: A method of unlocking a hand-held device [by continuously moving an unlock image]

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5 Anatomy of a Patent  Filing Date

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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6 Anatomy of a Patent  Filing Date (cont

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 practice All other countries have first-to-file system, as well

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7 Anatomy of a Patent  Field of Search

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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8 Anatomy of a Patent  References and Abstract

Anatomy of a Patent References and Abstract

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)

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9 Anatomy of a Patent  Drawings

Anatomy of a Patent Drawings

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

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10 Anatomy of a Patent  Drawings (cont

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 application and follow up later with final drawings (after first office action) Good for defending patent claims and fulfilling the enablement requirement (a pictures worth a thousand words)

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11 Anatomy of a Patent  Disclosure: Background

Anatomy of a Patent Disclosure: Background

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

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12 Anatomy of a Patent  Disclosure: Brief Introduction

Anatomy of a Patent Disclosure: Brief Introduction

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.)

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13 Anatomy of a Patent  Disclosure: Detailed Description

Anatomy of a Patent Disclosure: Detailed Description

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

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14 Anatomy of a Patent  Claims

Anatomy of a Patent Claims

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

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15 Anatomy of a Patent  Claims: Two Basic Types

Anatomy of a Patent Claims: Two Basic Types

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 a ball bearing assembly

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16 Claims

Claims

Specification

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17 Anatomy of a Patent  Claims: Specific Types

Anatomy of a Patent Claims: Specific Types

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

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18 Summary of Patent Anatomy

Summary of Patent Anatomy

Claims are the key description of invention Disclosure describes preferred embodiment (implementation) of invention, defines terminology Filing date establishes date for considering prior art

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19 Claim Chart

Claim Chart

Element-by-element breakdown of a patents claims compared to an allegedly infringing product Often used by prosecution for infringement analysis Very 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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20 US# 8046721 Slide to Unlock  Claim 1

US# 8046721 Slide to Unlock Claim 1

1. (1.0) A method of unlocking a hand-held electronic device, the device including a touch-sensitive display, the method comprising: (1.1) detecting a contact with the touch-sensitive display at a first predefined location corresponding to an unlock image; (1.2) continuously moving the unlock image on the touch-sensitive display (1.2.1) in accordance with movement of the contact (1.2.2) while continuous contact with the touch screen is maintained, (1.2.3) wherein the unlock image is a graphical, interactive user-interface object (1.2.3.1) with which a user interacts in order to unlock the device; and (1.3) 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.

21 Slide-to-unlock patent 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.)

22 Patent Infringement

Patent Infringement

Most of the time: Scenario: Company A thinks Companys Bs product infringes, sues B B has legal counsel perform due diligence, counsel says Youll probably lose. B agrees to settle with A and either Stop producing the infringing product License As 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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23 (Direct) Patent Infringement  Options

(Direct) Patent Infringement Options

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

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24 Patent Infringement  Defense: Patent Invalidity

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 shouldnt 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 As behalf by providing evidence for clear intent to deceive the Patent Office Show that As patent has expired

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25 Patent Infringement  Defense: Non-infringing Use

Patent Infringement Defense: Non-infringing Use

Methods of demonstrating non-infringing use: Perform an infringement analysis comparing As patent claims to Bs product features If not every element of one of As patents claims found in Bs product, then not infringing Prove that B already had a license for As patent Perhaps B already licensing As technology from C, in which case no infringement

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26 Patent Infringement  Uncommon Defenses

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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27 Patent Infringement  Basics

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 products features)

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28 Patent Infringement  Doctrine of Equivalents

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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29 Patent Infringement  Doctrine of Equivalents (cont

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 patents claims, if it does so in a substantially different way to achieve a substantially different result, then it doesnt infringe Example: you invent a method of curing cancer using Edisons light bulb ? would not infringe This defense is very rare

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30 Patent Infringement  Slide-to-Unlock Hypothetical

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 patents claim read on the Galaxy Tabs unlock system

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31 Slide-to-unlock patent 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 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.)

32 Patent Infringement  Slide-to-Unlock Hypothetical (cont

Patent Infringement Slide-to-Unlock Hypothetical (cont

The claim chart must clearly indicate that the Galaxy Tab infringes Apples patent What can Samsung do to defend itself?

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33 Slide-to-Unlock PatentPrior Art

Slide-to-Unlock PatentPrior 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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34 Slide-to-Unlock Patent  Prior Art (cont

Slide-to-Unlock Patent Prior Art (cont

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Slide-to-unlock function four minutes in

35 Patent Infringement  Hypothetical Samsung Defense

Patent Infringement Hypothetical Samsung Defense

Samsung could: Try to invalidate the patent with prior art, such as the Neonode N1ms unlocking system Argue that the patents claims are too broad Look for evidence of inequitable conduct on Apples behalf while filing for the slide-to-unlock patent Argue that the Galaxy Tab doesnt include every element of the claims What do you think would be the result of this case?

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Anatomy of a Patent Claims and Claim Charts Infringement
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