The Patent Parachute

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…”

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.

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.