What would you think of a poor skydiver plunging downward when his main parachute fails to open? I hope his emergency chute opens and saves him from his tragic destiny? Or, why would someone jump out of an airplane wearing a screwed up parachute? I guess I’m just a heartless dude. In my book, when that main chute fails to open, prepare to meet your maker.
Suing someone for infringing your patent is like jumping out of an airplane, in that you really really want the main chute to work as intended. By that, I mean that you really really want the defendant to be directly and literally infringing your patent claims. You want the jury to compare the accused product to your patent claims and conclude that everything is there. Wham, bam, thank you ma’am, your main chute worked correctly and you float safely down to where you want.
Otherwise, it’s an emergency. And before proceeding further, allow me to say: You stupid schlump! How did you get in this horrible situation? You deserve whatever you get…
But, there are a few emergency chutes for the patent owner hurling towards earth. If you’re very lucky, one of them might work. Very lucky.
Plan B, Doctrine of Equivalents. “I admit that the accused product does not literally infringe every word of my patent claims (which we’re written in a rush by a patent attorney with little experience who was willing to charge me a little less than a more experienced attorney).” “But, the accused product is a lot like what I thought was my invention, and so let’s say that it is different but equivalent to what my patent claims cover.” Amazingly, the law says that this argument could succeed... in theory. But without running our fingers through the bloody gore of all the details here, the executive summary is that Doctrine of Equivalents is very difficult to prove and very unlikely to succeed. You would be foolish to count on it succeeding.
Plan C, Contributory Infringement. “I admit that the accused product does not actually infringe any of my patent claims (which were written…).” “But, using the accused product with something else that the defendant does not actually sell, does result in an arrangement that infringes my patent.” Okay. This might work if you can do one more little thing; if you can show that the accused product always is used with that “something else” and there is no other meaningful use for the accused product. It happens. Not a lot.
Plan D, Infringement Inducement. “I admit etc…” “But, customers who bought the accused product infringe my patent when they use the accused product (though I don’t want to sue the customers because they also are my own customers who don’t appreciate the virtues of my suing them.)” “And, the defendants sold the accused product knowing that I have this patent, and knowing that my patent was unquestionably valid over all the earlier prior art in the field, and knowing for sure that my patent claims covered the use of their product by their customers, and the defendants did not even bother to ask a patent attorney if he would be willing for a fee to opine that they might not be infringing my valid patent.” If you can prove all that, then you win! Good luck.
So my expert advice for prospective patent plaintiffs is to be in no doubt that your main chute will work after you jump. Be very confident that the accused product does directly and literally infringe your patent claims. And while you’re at it, meditate on the part above about “which were written…”
Friday, December 2, 2011
Friday, April 22, 2011
More Problems With Patent Claims
So now we agree that the patent claims need to be infringed by the client’s competitors. But there are so many other things that can go wrong with patent claims. It is amazing how many claims are not infringeable.
One classic example of this arises for inventions based on a client server computer architecture:
A system for handling commercial transactions comprising:
a remote server for performing central server functions; and
a plurality of local clients connected to the server for performing local client functions.
Let’s say Megacorp runs a wildly successful service selling things to millions of customers over the Internet. But they do not directly infringe the above claim because they just run a server and do not operate any of the clients which belong to their customers. And vice versa, Megacorp’s customers do not directly infringe because they just operate the remote clients and have no control over Megacorp’s server. No one directly infringes.
Another example:
Computer software comprising:
program code for operating and controlling a microprocessor; and
program code for optimizing data transfers required by the microprocessor in a cool new way.
I call this the Microsoft-plus claim. The first claim element recites Microsoft Windows software. The second claim element is something to help Windows run better. So the only possible direct infringer is Microsoft (ignoring Apple OS X to make my point). Are the assignees of this patent really styling themselves as direct competitors of Microsoft (or Microsoft and Apple for all you OCD’ers)?
My point is that it is easy for unskilled hands to write patent claims that are not directly infringed, or not directly infringed by the right party. And that can be an enormous problem.
Now some patent attorneys would jump to argue that even without direct infringement the patent claims may still be usefully enforceable against the right party. That would be a transition into a discussion of some ideas known as inducement and contributory infringement. In my book these terms are hopeful code meaning: “Hey, maybe we’re not totally fucked.” To which I would answer: “Yes, you are.” I’ll explain why next time.
One classic example of this arises for inventions based on a client server computer architecture:
A system for handling commercial transactions comprising:
a remote server for performing central server functions; and
a plurality of local clients connected to the server for performing local client functions.
Let’s say Megacorp runs a wildly successful service selling things to millions of customers over the Internet. But they do not directly infringe the above claim because they just run a server and do not operate any of the clients which belong to their customers. And vice versa, Megacorp’s customers do not directly infringe because they just operate the remote clients and have no control over Megacorp’s server. No one directly infringes.
Another example:
Computer software comprising:
program code for operating and controlling a microprocessor; and
program code for optimizing data transfers required by the microprocessor in a cool new way.
I call this the Microsoft-plus claim. The first claim element recites Microsoft Windows software. The second claim element is something to help Windows run better. So the only possible direct infringer is Microsoft (ignoring Apple OS X to make my point). Are the assignees of this patent really styling themselves as direct competitors of Microsoft (or Microsoft and Apple for all you OCD’ers)?
My point is that it is easy for unskilled hands to write patent claims that are not directly infringed, or not directly infringed by the right party. And that can be an enormous problem.
Now some patent attorneys would jump to argue that even without direct infringement the patent claims may still be usefully enforceable against the right party. That would be a transition into a discussion of some ideas known as inducement and contributory infringement. In my book these terms are hopeful code meaning: “Hey, maybe we’re not totally fucked.” To which I would answer: “Yes, you are.” I’ll explain why next time.
Friday, March 18, 2011
Who Is Infringing?
I’ve written before about how difficult it is to know how good a patent attorney is (“Am I A Good Patent Lawyer?”). I used to think we were examples of what economists call the Expert Service Problem. That is, we were like dentists and auto mechanics in that it is extremely difficult for the customer to know how skilled (or even how honest) their expert service provider really is.
Previously I’ve suggested that clean clear communications and work product might be the only evidence of a skilled patent attorney, and the converse, crummy cluttered error-riddled documents, the main hallmark of a hack. But I’ve been rethinking that, and realized that there are more visible signs of patent prosecution skill.
One of these is to look at the claims of the patent and ask yourself: Who would infringe this? Consider a medical devices company that gets a patent with a claim that in part requires “a screw embedded in bone.” That claim will not be directly infringed by a competitor selling a product with a screw. Rather it is only directly infringed after the surgeon embeds the screw in the bone. Not good. Surgeons are the customers for this device. Your customers are not happy to be sued for infringing your patents
This is also not a particularly difficult problem to avoid. In the example above, everything changes if the claim simply reads: “a screw adapted to be embedded in bone.” But plenty of patent lawyers struggle with this.
So one thing a skilled patent attorney does is write patent claims that are infringed by the client’s competitors rather than their customers.
Previously I’ve suggested that clean clear communications and work product might be the only evidence of a skilled patent attorney, and the converse, crummy cluttered error-riddled documents, the main hallmark of a hack. But I’ve been rethinking that, and realized that there are more visible signs of patent prosecution skill.
One of these is to look at the claims of the patent and ask yourself: Who would infringe this? Consider a medical devices company that gets a patent with a claim that in part requires “a screw embedded in bone.” That claim will not be directly infringed by a competitor selling a product with a screw. Rather it is only directly infringed after the surgeon embeds the screw in the bone. Not good. Surgeons are the customers for this device. Your customers are not happy to be sued for infringing your patents
This is also not a particularly difficult problem to avoid. In the example above, everything changes if the claim simply reads: “a screw adapted to be embedded in bone.” But plenty of patent lawyers struggle with this.
So one thing a skilled patent attorney does is write patent claims that are infringed by the client’s competitors rather than their customers.
Wednesday, December 29, 2010
A Process for Managing Prior Art References
The law requires an Applicant for a U.S. patent to disclose to the United States Patent and Trademark Office to closest known material prior art references. When a patent is litigated, one of the most common defenses is to argue that the Applicant failed to do that and so deceived the Patent Office. Such failure renders the patent unenforceable. Separate from all that, a patent is strongest when it faces and overcomes the closest prior art during prosecution before the Patent Office. All this is powerful incentive to properly disclose the closest known prior art.
But medium to large size companies may own dozens, or hundreds, or even thousands of patents. The prior art that was considered in each of these may also be highly relevant to the current patent applications of that company. It would be cost prohibitive to closely review many hundreds of previously cited prior art references for each subsequent patent application. So the question is, how does one determine the closest prior art from an every growing jumble of many earlier possibly relevant prior art references?
I am not aware of any easy answers. Some attorneys create and maintain ever growing spreadsheets of prior art. For each pending application they aspire to somehow review their spreadsheet to determine what they will cite to the Patent Office. For other attorneys, they basically cite many hundreds of references in each case without determining the specific relevance of any of them (a practice I personally abhor and condemn).
For my own largest client, I use a litigation document management tool—Summation—to cross-reference and track all their prior art. Initially setting this up was quite time consuming, for each case, every cited reference was scanned and entered into the Summation database. And each reference is cross-tagged with all the other cases it ahs been cited in. Each month, a paralegal reviews all the substantive activity in the client’s matters and updates the Summation database.
Then for each new case for that client, I review the subject matter of the claimed invention and determine a list of somewhat related past cases. Sometimes, it is helpful to consider what prior cases we have handled for each inventor. This produces a handmade set list of possibly related cases. I then search the database for every reference cited in this set list. The results screen allows me to view at least the first page of each reference and at least momentarily consider its potential relevance to the case at hand and select any thing potentially relevant for inclusion in an Information Disclosure Statement (IDS) to the Patent Office.
My IDSs produced by this process can still be quite large, but at least I considered each reference and had a genuine reason for including it.
Honestly, the whole process of managing and citing prior art references can become enormously burdensome. But it does have to be done. Sorry about the cost…..
But medium to large size companies may own dozens, or hundreds, or even thousands of patents. The prior art that was considered in each of these may also be highly relevant to the current patent applications of that company. It would be cost prohibitive to closely review many hundreds of previously cited prior art references for each subsequent patent application. So the question is, how does one determine the closest prior art from an every growing jumble of many earlier possibly relevant prior art references?
I am not aware of any easy answers. Some attorneys create and maintain ever growing spreadsheets of prior art. For each pending application they aspire to somehow review their spreadsheet to determine what they will cite to the Patent Office. For other attorneys, they basically cite many hundreds of references in each case without determining the specific relevance of any of them (a practice I personally abhor and condemn).
For my own largest client, I use a litigation document management tool—Summation—to cross-reference and track all their prior art. Initially setting this up was quite time consuming, for each case, every cited reference was scanned and entered into the Summation database. And each reference is cross-tagged with all the other cases it ahs been cited in. Each month, a paralegal reviews all the substantive activity in the client’s matters and updates the Summation database.
Then for each new case for that client, I review the subject matter of the claimed invention and determine a list of somewhat related past cases. Sometimes, it is helpful to consider what prior cases we have handled for each inventor. This produces a handmade set list of possibly related cases. I then search the database for every reference cited in this set list. The results screen allows me to view at least the first page of each reference and at least momentarily consider its potential relevance to the case at hand and select any thing potentially relevant for inclusion in an Information Disclosure Statement (IDS) to the Patent Office.
My IDSs produced by this process can still be quite large, but at least I considered each reference and had a genuine reason for including it.
Honestly, the whole process of managing and citing prior art references can become enormously burdensome. But it does have to be done. Sorry about the cost…..
Tuesday, December 14, 2010
Why Do Patent Claims Have Unnecessary Elements?
There are “a plurality” of possible reasons why a patent claim you are looking at might seem to have unneeded claim elements that complicate assertion of the claim in litigation.
First and worst is low attorney skill. Beginners especially, but some attorneys at all experience levels, simply lack the claim drafting gift. Of course, where the working attorney is an associate at a law firm, this problem is really lack of good partner supervision. Not a surprising problem where the client pays a bargain price, but it can happen at all price points (ouch!).
But even skilled patent attorneys like a little meat on the bones of a patent claim. Imagine an invention of a new widget having an inventive gold sparkle. You could try a claim that simple: a widget having a gold sparkle. But such a claim invites a very direct validity attack in litigation—if you can find any gold sparkle in the prior art, grab it and argue it would be obvious to add to a widget… very reasonable.
One way to protect against that is to recite more widget structure in the claim language, especially if all widgets have this stuff any way: “A widget having at least one signal input and one or more signal outputs, widget memory for storing signals and values, and a processor in communication with the signal input, the signal outputs and the widget memory and transforming the input signal to generate the output signals so as to include a gold sparkle.” Effectively the same thing as a widget with gold sparkle, but it forces a much more complicated and long winded validity argument. And the longer the validity argument, the less powerful it is.
So that is one good reason for the extra unnecessary claim elements—stronger validity. But there is an even better reason to include such things in the claims: you have to. The Patent Office insists.
The Manual of Patent Examining Procedure has hundreds of rules that the Patent Office follows in processing a patent application. It is complicated and difficult to work with—hence patent attorneys have to pass a hard qualification exam to even correspond with the Patent Office. But there are some unofficial rules too. Like, we hate being embarrassed, don’t even try to do that. When having an interview with an Examiner, it is not at all unusual to hear them say: “This claim is too broad. We don’t issue claims that broad.” The attorney hearing that can get all huffy and outraged—That’s not in the rules! That’s not fair! But the reality is that the Examiner has discretionary control of a patent application. He has unlimited power to keep assembling combinations of references in obviousness rejections for much longer than you have time or money.
If the Examiner doesn’t want to issue the patent, he won’t. If the Examiner doesn’t issue the patent, it is never going to be around to be asserted in litigation. If you want a patent, you better hear the Examiner when he says we don’t issue claims that broad, and make him happy that your claims are not too broad. And claims two or three lines long—a widget having a gold sparkle—are going to look too short and too broad to many patent examiners. So adding on the extra unneeded claim elements—and hey, all widgets have this stuff any way—makes the claim look narrower. Suddenly the claim is ten or more lines long and has three or four required elements. The Examiner’s potential embarrassment alarm will not go off, and you just may get a patent issued, albeit with some unnecessary claim elements that your poor litigators will have to deal with.
So a given patent claim may have unneeded claim elements for two reasons, either poor attorney skill or high attorney skill. How do you know which reason applies? I’m not sure you can tell just by looking at one claim.
First and worst is low attorney skill. Beginners especially, but some attorneys at all experience levels, simply lack the claim drafting gift. Of course, where the working attorney is an associate at a law firm, this problem is really lack of good partner supervision. Not a surprising problem where the client pays a bargain price, but it can happen at all price points (ouch!).
But even skilled patent attorneys like a little meat on the bones of a patent claim. Imagine an invention of a new widget having an inventive gold sparkle. You could try a claim that simple: a widget having a gold sparkle. But such a claim invites a very direct validity attack in litigation—if you can find any gold sparkle in the prior art, grab it and argue it would be obvious to add to a widget… very reasonable.
One way to protect against that is to recite more widget structure in the claim language, especially if all widgets have this stuff any way: “A widget having at least one signal input and one or more signal outputs, widget memory for storing signals and values, and a processor in communication with the signal input, the signal outputs and the widget memory and transforming the input signal to generate the output signals so as to include a gold sparkle.” Effectively the same thing as a widget with gold sparkle, but it forces a much more complicated and long winded validity argument. And the longer the validity argument, the less powerful it is.
So that is one good reason for the extra unnecessary claim elements—stronger validity. But there is an even better reason to include such things in the claims: you have to. The Patent Office insists.
The Manual of Patent Examining Procedure has hundreds of rules that the Patent Office follows in processing a patent application. It is complicated and difficult to work with—hence patent attorneys have to pass a hard qualification exam to even correspond with the Patent Office. But there are some unofficial rules too. Like, we hate being embarrassed, don’t even try to do that. When having an interview with an Examiner, it is not at all unusual to hear them say: “This claim is too broad. We don’t issue claims that broad.” The attorney hearing that can get all huffy and outraged—That’s not in the rules! That’s not fair! But the reality is that the Examiner has discretionary control of a patent application. He has unlimited power to keep assembling combinations of references in obviousness rejections for much longer than you have time or money.
If the Examiner doesn’t want to issue the patent, he won’t. If the Examiner doesn’t issue the patent, it is never going to be around to be asserted in litigation. If you want a patent, you better hear the Examiner when he says we don’t issue claims that broad, and make him happy that your claims are not too broad. And claims two or three lines long—a widget having a gold sparkle—are going to look too short and too broad to many patent examiners. So adding on the extra unneeded claim elements—and hey, all widgets have this stuff any way—makes the claim look narrower. Suddenly the claim is ten or more lines long and has three or four required elements. The Examiner’s potential embarrassment alarm will not go off, and you just may get a patent issued, albeit with some unnecessary claim elements that your poor litigators will have to deal with.
So a given patent claim may have unneeded claim elements for two reasons, either poor attorney skill or high attorney skill. How do you know which reason applies? I’m not sure you can tell just by looking at one claim.
Wednesday, December 8, 2010
Why So Many Obvious Dependent Claims?
Why do patents have so many dependent claims that add zero to a validity analysis? As an experienced patent prosecutor, I have an immediate answer: It is a complicated subject affected by a lot of things that are hard to explain. But now that you ask, let me meditate for a bit….
Oh!
A new answer: You are wrong. They add a lot to the validity analysis. Allow the professor to explain.
Claim 1: A widget having three or four claim elements described in a mix of functional and structural language.
Claim 2: A widget according to claim 1, made of plastic.
Claim 3: A widget according to claim 1, which is disposable.
The patent is litigated. Let me go out on a limb and assume that the main defenses are non-infringement and obviousness (the unfortunate defendant cannot find an anticipating reference). A pretty safe hypothetical right? It only covers 90+% of all cases.
Let’s briefly consider the plaintiff’s infringement case. Assuming we can show Claim 1 is infringed, is it going to be any harder to show infringement of Claims 2 and 3? No.
Now the validity attack.
To the jury: Claims 2 and 3 are clearly obvious, all widget in the marketplace are made of plastic and disposable.
Jury: Okay, that makes sense, Claims 2 and 3 are obvious.
To the jury: Reference 1 teaches a whole of stuff including some elements of Claim 1 and Reference 2 teaches a whole lot of other stuff including other elements of Claim 1, and a person with a PhD in the field and six years experience with the complicated requirements of making widgets would be likely to borrow just the right things from Reference 1 and Reference 2 to arrive at all the elements required by Claim 1.
Jury: Huh? You lost me. But clearly Claim 1 is not obvious in the same way that Claims 2 and 3 are obvious, is it? If obviousness is why Claims 2 and 3 are invalid, then Claim 1 is not obvious in the same way, and not invalid.
Oh!
A new answer: You are wrong. They add a lot to the validity analysis. Allow the professor to explain.
Claim 1: A widget having three or four claim elements described in a mix of functional and structural language.
Claim 2: A widget according to claim 1, made of plastic.
Claim 3: A widget according to claim 1, which is disposable.
The patent is litigated. Let me go out on a limb and assume that the main defenses are non-infringement and obviousness (the unfortunate defendant cannot find an anticipating reference). A pretty safe hypothetical right? It only covers 90+% of all cases.
Let’s briefly consider the plaintiff’s infringement case. Assuming we can show Claim 1 is infringed, is it going to be any harder to show infringement of Claims 2 and 3? No.
Now the validity attack.
To the jury: Claims 2 and 3 are clearly obvious, all widget in the marketplace are made of plastic and disposable.
Jury: Okay, that makes sense, Claims 2 and 3 are obvious.
To the jury: Reference 1 teaches a whole of stuff including some elements of Claim 1 and Reference 2 teaches a whole lot of other stuff including other elements of Claim 1, and a person with a PhD in the field and six years experience with the complicated requirements of making widgets would be likely to borrow just the right things from Reference 1 and Reference 2 to arrive at all the elements required by Claim 1.
Jury: Huh? You lost me. But clearly Claim 1 is not obvious in the same way that Claims 2 and 3 are obvious, is it? If obviousness is why Claims 2 and 3 are invalid, then Claim 1 is not obvious in the same way, and not invalid.
Tuesday, August 4, 2009
Epic Patents
You’ve seen The Poseidon Adventure, a big sprawling movie with a dozen or so stars, each having major parts that have to be properly developed to showcase their talents. Some patents are like that with multiple different inventions all confined in the same description. You could echo the analogy to big movies and call these “epic patents,” though I call them “omnibus patents.” Whatever you call them, they create special challenges.
For one thing, many claims are needed, at least one independent claim for each separate invention (a simplification for purposes of discussion, there are good reasons to have three or four different kinds of independent claims for each invention). And for each independent claim, it is always wise to include a set of successively narrower dependent claims as validity protection against potential prior art. So for an omnibus application with four or five separate inventions, there can easily be 40 or 50 claims, even in our simplified scenario.
But the U.S. Patent Office will limit its examination of an application to a single claimed invention, issuing a restriction requirement forcing the Applicant to elect just one set of claims for examination. Any others can be pursued separately in one or more divisional applications. It is usually not too hard to choose a first set of claims to elect for initial examination, but it is often unclear whether or which claims to file in divisionals and when.
Luckily for you, I am here with an answer to that. When the patent attorney is initially preparing an omnibus patent application, he or she should be able to foresee the situation above. And the first of group of claims for the first invention expected to be elected should start with claim 1 and a conventional set of dependent claims, e.g., claims 2-10. Then include some additional “special” dependent claims which narrow claim 1 by adding in limitations that include the subject matter of each of the other independent claims that correspond to the other (initially unelected) inventions.
Why? Because shortly after the election of the first restriction group of the claims, the Examiner is going to produce an Office action on the merits which initially rejects all of the elected claims. Supporting that rejection, he (or she) is going to cite one or more prior art references that purportedly show what is claimed. And the rejections of the “special” claims are going to give the patent attorney and the client a suggestion of just how new and valuable each of the unelected inventions might be. If the rejection of any of the special claims is reasonably solid, then that suggests that it might be difficult to prosecute similar independent claims without the additional restrictions of claim 1. But if the rejection of any of the special claims is not very compelling, then that suggests that a divisional patent application with similar broader claims might be promising.
Thus, the use of special dependent claims to provide a preliminary test of potential divisional claims can be a useful tactic in large omnibus patent applications.
For one thing, many claims are needed, at least one independent claim for each separate invention (a simplification for purposes of discussion, there are good reasons to have three or four different kinds of independent claims for each invention). And for each independent claim, it is always wise to include a set of successively narrower dependent claims as validity protection against potential prior art. So for an omnibus application with four or five separate inventions, there can easily be 40 or 50 claims, even in our simplified scenario.
But the U.S. Patent Office will limit its examination of an application to a single claimed invention, issuing a restriction requirement forcing the Applicant to elect just one set of claims for examination. Any others can be pursued separately in one or more divisional applications. It is usually not too hard to choose a first set of claims to elect for initial examination, but it is often unclear whether or which claims to file in divisionals and when.
Luckily for you, I am here with an answer to that. When the patent attorney is initially preparing an omnibus patent application, he or she should be able to foresee the situation above. And the first of group of claims for the first invention expected to be elected should start with claim 1 and a conventional set of dependent claims, e.g., claims 2-10. Then include some additional “special” dependent claims which narrow claim 1 by adding in limitations that include the subject matter of each of the other independent claims that correspond to the other (initially unelected) inventions.
Why? Because shortly after the election of the first restriction group of the claims, the Examiner is going to produce an Office action on the merits which initially rejects all of the elected claims. Supporting that rejection, he (or she) is going to cite one or more prior art references that purportedly show what is claimed. And the rejections of the “special” claims are going to give the patent attorney and the client a suggestion of just how new and valuable each of the unelected inventions might be. If the rejection of any of the special claims is reasonably solid, then that suggests that it might be difficult to prosecute similar independent claims without the additional restrictions of claim 1. But if the rejection of any of the special claims is not very compelling, then that suggests that a divisional patent application with similar broader claims might be promising.
Thus, the use of special dependent claims to provide a preliminary test of potential divisional claims can be a useful tactic in large omnibus patent applications.
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