1. Patent Innovations- Berkeley-Lavian 4th week 1 Patent Engineering IEOR 190G CET: Center for Entrepreneurship &Technology 4th Week Dr. Tal Lavian (408)-209-9112 Tlavian@cs.berkeley.edu 225A Bechtel Mondays 4:00-5:45

2. Patent Innovations- Berkeley-Lavian 4th week 2 Students Presentations Students’ presentations Topics on patent engineering in litigated cases Some examples from last semester: http://www.cs.berkeley.edu/~tlavian/spring2008/patentEngineering.html http://www.cs.berkeley.edu/~tlavian/spring2008/patentEngineering.html

3. Patent Innovations- Berkeley-Lavian 4th week 3 Students Feedback

4. Patent Innovations- Berkeley-Lavian 4th week 4 Project with Law School 3 units is ok iPod screed Work with the law school Ted Schilelman Potential $50,000 for prior art

5. Patent Innovations- Berkeley-Lavian 4th week 5 Students Presentations Present in 10-15 min a patent litigation case Case summary Parties, dates, history, issue in dispute, results Engineering aspects of the dispute The patent(s), technology, product Engineering aspects of the infringement The engineering view vs. the legal view Any proposed design around The iPod touch screen patent –Need 4 volunteers

6. PatentEng-Berkeley-Lavian 4th week 6 What is a Patent? (Cont.) Right to Exclude the Making, Using, Selling, Offering for Sale or Importation of a Specified Invention –Limited Time (Typically 20 Years from date of filing with USPTO) –Limited Geographic Territory (issuing country) Monopoly awarded by the Government for sharing the Invention with the public

7. PatentEng-Berkeley-Lavian 4th week 7 Protecting the Idea Protecting the idea, not the embodiment Allowed to claim broader than the physical embodiment Protection: –Limited rights during the life of the patent Filing to end Issue to end

8. PatentEng-Berkeley-Lavian 4th week 8 What can be patented? “Everything under the sun made by man.” –Products: things –Processes: ways to make things –Methods: ways to do things –Improvements: better things Defined Classes – Article of Manufacture – Machine – Composition – Process Some more: –Business Methods –Services –Software

9. PatentEng-Berkeley-Lavian 4th week 9 Criteria – Legal Standards Novelty – Does not exist in the prior art – Not previously disclosed to public – OK if Modification/Improvement of an existing product/process, or use of something “old” in new/different way Usefulness - Utility - Performs a useful function Non-obviousness – Non-trivial - It would not have been obvious to one skilled in the art to combine multiple items in the public domain to arrive at or show the invention – Not Engineer’s normal sense of “obviousness”! Enabled

10. PatentEng-Berkeley-Lavian 4th week 10 What Is Not Patentable Laws of nature (wind, gravity) Physical phenomena (sand, water) Abstract ideas (mathematics, a philosophy) –Algorithms per se Anything not useful, Novel and Non- Obvious (perpetual motion machine) Inventions which are offensive to public morality or designed for an illegal activity

11. PatentEng-Berkeley-Lavian 4th week 11 Novelty First to invent (vs. first to file) Conception –the conceiving of the idea of the invention Reduction to Practice –the construction or testing of the invention (actual) –or the filing of a patent application (constructive)

12. PatentEng-Berkeley-Lavian 4th week 12 Statutory Bars Patent rights to an invention will be lost if: –The invention is used publicly –The invention is sold or offered for sale –The invention is published in a printed publication or a patent –Before the filing of a patent application (more than one year in U.S.)

13. PatentEng-Berkeley-Lavian 4th week 13 Prior Art Information prior to the date of a patent application Existing relevant technology Can be your own technology or acts

14. PatentEng-Berkeley-Lavian 4th week 14 Foreign Standards fro Prior Art “Absolute novelty” The invention must not have been disclosed or available to the public at any time before the filing of the application

15. PatentEng-Berkeley-Lavian 4th week 15 Obviousness A patent may not be obtained if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art The obviousness standard prevents the patenting of relatively insignificant differences between the invention and the prior art How much this is true?

16. PatentEng-Berkeley-Lavian 4th week 16 Obviousness (cont’d) Prior art can be combined in an obviousness determination, that is, more than one reference can be cited by the examiner as showing different features of the invention which, taken together, render the invention obvious Obviousness is inherently a subjective determination, as the examiner cannot be, or know the mind of, the hypothetical “one skilled in the art.”

17. PatentEng-Berkeley-Lavian 4th week 17 Utility The invention must satisfy the “useful” requirement of the patent laws This is easy requirement for high-tech inventions The patent system was created as a reward for inventive contributions to society, not for merely creative ideas that have no application

18. PatentEng-Berkeley-Lavian 4th week 18 Utility Patents What is patentable? New and useful… –Process –Machine –Manufacture –Composition of matter –Improvements What is unpatentable? –Prior existing technology

19. PatentEng-Berkeley-Lavian 4th week 19 Utility Patent Types Two types of US Utility Patents –Provisional application –Non-Provisional application Continuation Divisional CIP PCT International

20. PatentEng-Berkeley-Lavian 4th week 20 Other Types of Patents Design Patents: are issued for – Novel, non-obvious –Ornamental design in an article of manufacture –In other words, for its appearance –The term of a design patent is 14 years from the date of grant Plant Patent –new or discovered a sexually reproduced plant

21. PatentEng-Berkeley-Lavian 4th week 21 Types of Patents TypeIs for Term#s Utility Function, use20 years6,214,874 Design Appearance14 yearsD202,331 Plant Asexually reproduced 20 yearsPP10123

22. Patent Presetnation 22 Who is an Inventor? a person who alone or in conjunction with others makes a material contribution to the conception of an invention (conceived the idea) a person who reduces the conception to practice if it requires extraordinary skill Non-Inventors: –Persons who implement the ideas of others –Persons who have obtained the entire idea of an invention from another are not inventors –Persons who suggest concepts without contributing to the means for carrying out the suggestion (“Wouldn’t it be nice if….”)

23. Patent Presetnation Confidential 23 INVENTORS CLASSIFICATION NUMBERS PRIOR ART REFERENCES TITLE ABSTRACT PRIOR ART CONTINUED ASSIGNEE

24. Patent Presetnation Confidential 24 CLAIMS SPECIFICATION

25. Patent Presetnation 25 The Golden Age of Patents Presumption of validity strong Large verdicts / settlements abound Federal Circuit is unpredictable Threat of injection is real

26. Patent Presetnation Confidential 26 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

27. Patent Presetnation 27 First to File Many jurisdictions award patents to the first to file an application for the invention (and the US is moving in this direction) Earliest Inventions Most Valuable Broadest concepts are the most valuable. One should not, therefore, delay filing simply because unrealized improvements envisioned No Need to Test Invention or Build Prototype There is no requirement to prove that an invention works in order to obtain a patent A patent must merely provide instructions for one of skill in the art to practice the invention without undue experimentation When to Disclose

28. Patent Presetnation 28 Invention = A New Solution to a Problem Categories of Inventions Articles of Manufacture, Machines, Compositions and Processes Only need a single difference over the prior art Can include business methods and services New Uses for Known Articles of Manufacture, Machines, Compositions and Processes Test for Novelty – Same thing, used in same way, for same purpose Improvements Even if based on invention patented by another Software

29. Patent Presetnation 29 Assessing Value – Influential Factors Likelihood of third parties using the solution (now or in the future) Demand for the solution (cost reduction and/or new feature) Whether “base invention” patented (fundamental v. improvement) Key enabling / lynchpin solution Whether the invention is of general applicability Whether the invention is useful to a key competitor

30. Patent Presetnation 30 Assessing Value – Influential Factors cont’ Breadth of the solution (available alternatives) Likelihood of solution being an essential feature of an industry standard Whether infringement is detectable Whether invention outside core industry Simplicity of solution Importance of innovation to future company products and / or services

31. Patent Presetnation 31 Assessing Novelty Determine broadest invention Determine major problems solved and technical means for doing so Identify closest known prior art Determine broadest inventive concepts Recall: Consider functionality and problem solved If structure known, consider whether elements used in new way? If function also known, consider whether new problem solved?

32. Patent Presetnation 32 What inventions are important? Inventions are evaluated on three key criteria: –Strategic thrust or importance to the company or competitors Is the invention related to parts of the business that we believe will have long term importance? –Inventive value How significant is the invention? Minor improvement or new technology? Is it the basis for a standard? –Commercial value How much money can we charge others to use the invention?

33. Patent Presetnation 33 Promote Innovation Strengthen corporate community by focusing upon internal networking and information sharing Augment sources of innovation by promoting an environment of creativity –Create a simple and supportive environment that builds on ideas heard from any employee and encouragement/mentorship by subject matter experts Supplement corporate strategy - what exists beyond Transformation - by discovering ideas to invest in now for the future

34. Patent Presetnation 34 How Can A Patent Provide Business Value? Can exclude others from using Company innovations Can be licensed for income Can be utilized for other business value (e.g. cross- licensing, if appropriate) Can be used defensively to avoid or deter litigation Can enable “freedom to operate” Demonstrates technology leadership Business Value/Return on R&D Investment Business Value/Return on R&D Investment

35. 35 Aro Top 1964 – repair v reconstruction City of Elizabeth 1878 – experimental use Chakrabarty 1980 – patentable subject matter DSU v. JMS * 2006 – inducing infringement eBay 2006 – permanent injunctions Egbert 1881 - experimental use All Supreme Court except * Major Cases

36. 36 Festo 2002 – pros.history estoppel Graver Tank [Graver Mfg v Linde] 1950 – doctrine of equivalents Graham v. Deere 1966 – obviousness Gurley * 1994 – teaching away Harvard Mouse [Canada] 2002 - patentable subject matter Knorr-Bremse * 2004 - willfulness KSR 2007 – obviousness All Supreme Court except * Major Cases

37. 37 Markman 1994 – claim construction Monsanto (Canadian) * 2004 – plants Parker v Flook 1978 – patentable subject matter Seagate 1994 – teaching away State Street * 1998 – patentable subject matter Westinghouse v Boyden Brake 1898 – reverse DOE All Supreme Court except * Major Cases

38. 38 CLAIMS Claims - define the legal effect of the patent - new VERB: READ ON if a claim READS ON the prior art they are INVALID if a claim READS ON an accused device, the device INFRINGES the claim

39. 39 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

40. 40 Liability ≈ Validity & Infringement In ANY IP case (copyright, trademark, trade secret), the liability questions are: IS IT VALID? IS IT INFRINGED? What the “it” is will vary, of course. What makes an“it” valid is different, too. So: What is the “it” in a patent case?

41. 41 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

42. 42 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

43. 43 Anticipation Obviousness Indefiniteness Written Description Enablement Best Mode primarily (In)Validity Which issues involve the CLAIMS, Which the SPECIFICATION?

44. 44 Depends on what is in the PRIOR ART. How do those 2 differ? 1.HOW MUCH ART? 2.What other things matter, besides the art and what it DISCLOSES? Anticipation and Obviousness

45. 45 Anticipation and Obviousness 1. How much art? Anticipation: A single piece of prior art is ON ALL FOURS. The claim READS ON this single reference. Obviousness: Usually more than one reference, but could be one reference PLUS the knowledge of the PERSON OF ORDINARY SKILL IN THE ART.

46. 46 Anticipation and Obviousness 2. What else matters besides ? Anticipation: NOTHING. Except that the single piece of Prior Art must ENABLE at least as well as the patent does. Obviousness: LOTS. The PRIMARY CONSIDERATIONS. (really not much beyond the p.a., but there’s a formula for them, from the statute and from court decisions) The SECONDARY CONSIDERATIONS Guess which one Accused Infringers prefer to use to challenge a patent? What about Patent Owners?

47. PatentEng-Berkeley-Lavian 4th week 47 Types of Patents TypeIs for Term#s Utility Function, use20 years6,214,874 Design Appearance14 yearsD202,331 Plant Asexually reproduced 20 yearsPP10123