1. PatentEng-Berkeley-Lavian Week 6: Validity and Infringement 1 Patent Engineering IEOR 190G CET: Center for Entrepreneurship &Technology Week 6 Dr. Tal Lavian (408) 209-9112 Tlavian@cs.berkeley.edu 321 Haviland Mondays 4:00-6:00

2. PatentEng-Berkeley-Lavian Week 6: Validity and Infringement 2 INVENTORS CLASSIFICATION NUMBERS PRIOR ART REFERENCES TITLE ABSTRACT PRIOR ART CONTINUED ASSIGNEE

3. PatentEng-Berkeley-Lavian Week 6: Validity and Infringement 3 CLAIMS SPECIFICATION

4. PatentEng-Berkeley-Lavian Week 6: Validity and Infringement 4 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. 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

6. Two Basic Types of Claims 1.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 6 Week 6: Validity and Infringement

7. Claim scope Independent claims define patent scope Dependent claims are fallbacks –prior art PatentEng-Berkeley-Lavian 7 Week 6: Validity and Infringement

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

9. 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? PatentEng-Berkeley-Lavian Week 6: Validity and Infringement

10. 10 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 PatentEng-Berkeley-Lavian Week 6: Validity and Infringement

11. 11 Vocabulary READ ON Prior Art Ways to Demonstrate Invalidity ~ ISSUES Anticipation Obviousness Indefiniteness failing to provide an adequate Written Description Enablement / failure to Enable Best 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 PatentEng-Berkeley-Lavian Week 6: Validity and Infringement

12. 12 Anticipation Obviousness Indefiniteness Written Description Enablement Best Mode (In)Validity Which issues involve the CLAIMS? Which issues involve the SPECIFICATION? PatentEng-Berkeley-Lavian Week 6: Validity and Infringement primarily

13. Mechanics of Claim Construction Claims Chart –Claims –Specification –File History Claim Paragraphs Support in The Specification Copyright 2001: The Schwegman Institute Opinion Seminar Series PatentEng-Berkeley-Lavian 13 Week 6: Validity and Infringement

14. 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 Copyright 2001: The Schwegman Institute Opinion Seminar Series PatentEng-Berkeley-Lavian 14 Week 6: Validity and Infringement

15. Mechanics of Claim Comparison Claims Comparison Chart Copying Public Notice Ambiguous/Vague Claims Copyright 2001: The Schwegman Institute Opinion Seminar Series PatentEng-Berkeley-Lavian 15 Week 6: Validity and Infringement

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

17. 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 PatentEng-Berkeley-Lavian 17 Week 6: Validity and Infringement Copyright 2001: The Schwegman Institute Opinion Seminar Series

18. 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 PatentEng-Berkeley-Lavian 18 Week 6: Validity and Infringement Copyright 2001: The Schwegman Institute Opinion Seminar Series