1. Patenting Wireless Technology: Infringement and Invalidity Dr. Tal Lavian http://cs.berkeley.edu/~tlavian tlavian@cs.berkeley.edu UC Berkeley Engineering, CET

2. Last Week: Types of Patents 2 TypeIs forTerm#s UtilityFunction, use20 years6,214,874 DesignAppearance14 yearsD202,331 PlantAsexually reproduced 20 yearsPP10123

3. 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 product’s features) 7

4. 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 8

5. 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 Reverse Doctrine of Equivalents  Essentially, even if a product directly infringes on a patent’s claims, if it does so in a substantially different way to achieve a substantially different result, then it doesn’t infringe  Example: you invent a method of curing cancer using Edison’s light bulb  would not infringe  This defense is very rare 9

6. Patent Infringement Most of the time:  Scenario:  Company A thinks Company’s B’s product infringes, sues B  B’s legal counsel perform due diligence; counsel says, “You’ll probably lose.”  B agrees to settle with A and either Stops producing the infringing product License A’s patent in order to continue infringing Sometimes:  Scenario:  Same as above, but B decides to go to court to defend their product 2

7. (Direct) Patent Infringement–Options A sues B. B decides to take the case to trial. What are B’s options? 3

8. Patent Infringement–Defense: Patent Invalidity Argue for patent invalidity:  Perform prior art search to find prior art that invalidates the patent claims Can show that A shouldn’t 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 A’s behalf by providing evidence for clear intent to deceive the Patent Office  Show that A’s patent has expired 4

9. Patent Infringement–Defense: Non-infringing Use Methods of demonstrating non-infringing use:  Perform an infringement analysis comparing A’s patent claims to B’s product features If not every element of one of A’s patent’s claims found in B’s product, then B is not infringing  Prove that B already had a license for A’s patent Perhaps B already licensing A’s technology from C, in which case there’s no infringement 5

10. Patent Infringement–Uncommon Defenses Prior user defense  Applies only to business method patents  If B can prove use of the patented process at least one year before its application was filed, B is not infringing  Must be an “innocent infringer” i.e., did not know of the patent Laches  A is not allowed to assert patent rights if it can be shown A delayed enforcement to increase potential damages from B 6

11. 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 patent’s claim read on the Galaxy Tab’s unlock system 10

12. Slide-to-Unlock Patent –Claim Chart Element-by-element breakdown of a patent’s 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 12

13. 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.

14. Slide-to-unlock patent claim 1Samsung 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 image. 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.)

15. Slide-to-Unlock Hypothetical (cont.) The claim chart must clearly indicate that the Galaxy Tab infringes Apple’s patent What can Samsung do to defend itself? 12

16. Slide-to-Unlock Patent–Prior 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 might cite Neonode N1m (early smartphone released in 2005) as prior art in an attempt to invalidate patent 16

17. Slide-to-Unlock Patent – Prior Art (cont.) 17 Slide-to-unlock function four minutes in

18. Patent Infringement – Hypothetical Samsung Defense Samsung could:  Try to invalidate the patent with prior art, such as the Neonode N1m’s unlocking system  Argue that the patent’s claims are too broad  Look for evidence of inequitable conduct on Apple’s behalf while filing for the slide-to-unlock patent  Argue that the Galaxy Tab doesn’t include every element of the claims What do you think would be the result of this case? 13

19. Summary Infringments: DoE vs Reverse DoE Defense of patent infringement:  Invalidity: prior art, claims, inequitable conduct  Non-infringment: infringement analysis, licensing, prior use, Laches