Drafting Patent Applications to Avoid Litigation Traps - by Michael Shimokaji

396 views

Published on

For the unwary, there are traps that can exist in drafting patent application. Five traps relate to inventorship, best mode disclosure, distinctly claiming, in light of the specification, and dependent claims.

Published in: Business
0 Comments
1 Like
Statistics
Notes
  • Be the first to comment

No Downloads
Views
Total views
396
On SlideShare
0
From Embeds
0
Number of Embeds
1
Actions
Shares
0
Downloads
0
Comments
0
Likes
1
Embeds 0
No embeds

No notes for slide

Drafting Patent Applications to Avoid Litigation Traps - by Michael Shimokaji

  1. 1. DRAFTING PATENT APPLICATIONS TO AVOID LITIGATION TRAPS Michael A. Shimokaji OVERVIEW0* DIVERGENT GOALS OF PROSECUTION & LITIGATION OVERVIEW1* TRAP #1 - INVENTORSHIP2* TRAP #2 – BEST MODE DISCLOSURE3* TRAP #3 – DISTINCLY CLAIMING4* TRAP #4 – IN LIGHT OF SPECIFICATION5* TRAP #5 – DEPENDENT CLAIMS
  2. 2. DIVERGENT GOALS OF PROSECUTION AND LITIGATION6* What Works for One Does Not Always Work for the Other 7* Divergent goals create litigation traps for the patent prosecutor 8* Prosecution Goals 9* Litigation Goals DIVERGENT GOALS OF PROSECUTION AND LITIGATION10* Prosecution Goals 11* Cost may be of primary importance 12* Minimize inventor burden 13* Read the prior art narrowly 14* Client receives patent
  3. 3. DIVERGENT GOALS OF PROSECUTION AND LITIGATION15* Plaintiff’s Litigation Goals 16* Cost is secondary 17* Construe the prior art narrowly 18* Construe the claims broadly 19* Find validity and infringement DIVERGENT GOALS OF PROSECUTION AND LITIGATION20* Defendant’s Litigation Goals 21* Cost is secondary 22* Construe the prior art broadly 23* Construe the claims narrowly 24* Find invalidity and non-infringement
  4. 4. TRAP #1 - INVENTORSHIP25* Is it Simply Who is Listed on the Invention Record? 26* 35 U.S.C. Section 116 requirements 27* Internal collaborative work 28* External collaborative work TRAP #1 - INVENTORSHIP29* 35 U.S.C. Section 116 Requirements 30* “When an invention is made by two or more persons jointly, they SHALL apply for patent jointly” TRAP #1 - INVENTORSHIP31* 35 U.S.C. Section 116 Requirements
  5. 5. 32* May apply jointly even though (1) they did not physically work together or at the same time (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to every patent claim TRAP #1 - INVENTORSHIP33* 35 U.S.C. Section 116 Requirements 34* “Determining ‘inventorship’ is nothing more than determining who conceived the subject matter at issue.” Sewall v. Walters, 21 F.3d 411, 416 (Fed. Cir. 1994) TRAP #1 - INVENTORSHIP35* 35 U.S.C. Section 116 Requirements 36* “Conception exists when a definite and permanent idea of an operative invention, including every feature of the subject matter sought to be patented, is known.” Sewell at 415
  6. 6. TRAP #1 - INVENTORSHIP37* 35 U.S.C. Section 116 Requirements 38* Conception is complete when one of ordinary skill in the art could construct the apparatus without unduly extensive research or experimentation.” Sewell at 415 TRAP #1 - INVENTORSHIP39* What Can Happen During Prosecution 40* Internal Collaborative Work 41* External Collaborative Work TRAP #1 - INVENTORSHIP42* Internal Collaborative Work
  7. 7. 43* Desire to recognize all team members 44* Invention record is filled out by engineers TRAP #1 - INVENTORSHIP45* External Collaborative Work 46* Each company wants to be recognized as the primary contributor 47* Each company wants their team member to be the lead inventor named on the patent 48* Each company wants the maximum numbers of inventors representing their respective company TRAP #1 - INVENTORSHIP49* What Can Happen in Litigation 50* Who was improperly named 51* Who was omitted
  8. 8. TRAP #1 - INVENTORSHIP52* How to Avoid Trap #1 53* At completion of patent application 54* Prepare claim/inventor chart 55* Confirm contribution to at least one claim TRAP #2 – BEST MODE56* Best Mode According to the Invention Record? 57* 35 U.S.C. Section 112 ¶ 1 requirements 58* Obscuring the best mode
  9. 9. TRAP #2 – BEST MODE59* 35 U.S.C. Section 112 ¶1 Requirements 60* patent must “set forth the best mode contemplated by the inventor of carrying out his invention” TRAP #2 – BEST MODE61* Best Mode Section 112 ¶1 Requirements 62* first of two prong inquiry 63* whether, at the time the inventor filed his patent application, he knew of a mode of practicing his claimed invention that he considered to be better than any other. Chemcast Corp. v. Arco Indus. Corp., 913 F.2d 923, 927-28 (Fed. Cir. 1990)
  10. 10. TRAP #2 – BEST MODE64* Best Mode Section 112 ¶1 Requirements 65* second of two prong inquiry 66* is the disclosure adequate to enable one skilled in the art to practice the best mode or, in other words, has the inventor ‘concealed’ his preferred mode from the ‘public’. Chemcast TRAP #2 – BEST MODE67* What Can Happen During Prosecution 68* Obscuring the best mode 69* Best mode in invention disclosure versus patent application TRAP #2 – BEST MODE
  11. 11. 70* Obscuring the Best Mode 71* Intentional concealment is not required to violate the best mode requirement. United States Gypsum Co. v. National Gypsum Co., 74 3d 1209, 1215 (Fed. Cir. 1996) 72* Disclosing only a useful mode to hide the best mode TRAP #2 – BEST MODE73* Best Mode in Written Disclosure Versus Application 74* Best mode determined at time of filing. Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 963 (Fed. Cir. 2001) 75* Improvements made during application preparation TRAP #2 – BEST MODE76* What Can Happen in Litigation 77* What experimental details omitted
  12. 12. 78* What experimental results omitted TRAP #2 – BEST MODE79* How to Avoid Trap #2 80* At completion of patent application 81* Identify points of novelty in claims 82* Confirm best mode disclosure in specification against novelty TRAP #3 – DISTINCTLY CLAIMING83* Claiming Broadly or Making it Indefinite 84* 35 U.S.C. Section 112 ¶ 2 requirements 85* Words in claims versus specification
  13. 13. TRAP #3 – DISTINCTLY CLAIMING86* 35 U.S.C. Section 112 ¶ 2 Requirements 87* “one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention” 13 TRAP #3 – DISTINCTLY CLAIMING88* 35 U.S.C. Section 112 ¶ 2 Requirements 89* Indefinitenes “depends on whether those skilled in the art would understand the scope of the claim when the claim is read in light of the specification" Atmel Corp. v. Information Storage Devices, Inc., 198 F.3d 1374, 1378 (Fed. Cir. 1999)
  14. 14. TRAP #3 – DISTINCTLY CLAIMING90* 35 U.S.C. Section 112 ¶ 2 Requirements 91* Claim terms are presumed to have the ordinary and customary meanings attributed to them by those of ordinary skill in the art. Sunrace Roots Enter. Co. v. SRAM Corp., 336 F.3d 1298, 1302 (Fed. Cir. 2003) TRAP #3 – DISTINCTLY CLAIMING92* 35 U.S.C. Section 112 ¶ 2 Requirements 93* If a disputed term has “no previous meaning to those of ordinary skill in the prior art, its meaning, then, must be found (elsewhere) in the patent.” J.T. Eatn & Co. v. Atl. Paste & Glue Co., 106 F.3d 1563, 1570 (Fed. Cir. 1997) TRAP #3 – DISTINCTLY CLAIMING94* 35 U.S.C. Section 112 ¶ 2 Requirements
  15. 15. 95* Difficult issue of claim construction does make claim indefinite; there is no requirement that claims be plain on their face. Morton Int’l v. Cardinal Chemical Co., 5 F.3d 1464 (Fed. Cir. 1993) TRAP #3 – DISTINCTLY CLAIMING96* What Can Happen During Prosecution 97* Words in Claims versus Specification TRAP #3 – DISTINCTLY CLAIMING98* Words in Claims versus Specification 99* Same words 100* Different words
  16. 16. TRAP #3 – DISTINCTLY CLAIMING101* Same Words in Claims & Specification 102* “Digital detector” is not indefinite when defined in specification. Personalized Media Communications, LLC v. U.S. Intl Trade Commn, 161 F.3d 696 (Fed. Cir. 1998) TRAP #3 – DISTINCTLY CLAIMING103* Different Words in Claims & Specification 104* Step of “comparing” not explained in specification and indefinite. Union Pac. Resources Co. v. Chesapeake Energy Corp., 236 F.3d 684, 692 (Fed. Cir. 2001) TRAP #3 – DISTINCTLY CLAIMING105* Different Words in Claims & Specification 106* Another view - rejected defense of indefiniteness where claim term “original unidentified mass” not in specification but described in prosecution history. ALL Dental Prodx v. Advantage Dental Products, 309. F.3d 774, 779 (Fed. Cir. 2002)
  17. 17. TRAP #3 – DISTINCTLY CLAIMING107* What Can Happen in Litigation 108* Pick a dictionary to put spin on “ordinary meaning” 109* Pick an expert to put spin on “term of art” TRAP #3 – DISTINCTLY CLAIMING110* How to Avoid Trap #3 111* Consistent use of words in claims and specification 112* Define words that represent points of novelty TRAP #4 – LIMITATION OF SPECIFICATION113* Claims Read in Light of the Specification
  18. 18. 114* “The problem is to interpret claims in view of the specification without unnecessarily importing limitations from the specification into the claims.”E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003) TRAP #4 – LIMITATION OF SPECIFICATION115* What Can Happen in Prosecution 116* Preferred or exemplary embodiments 117* Test examples 118* Necessary or useful features TRAP #4 – LIMITATION OF SPECIFICATION119* Preferred or Exemplary Embodiments 120* Even though there was only one disclosed embodiment, it was improper to read a specific order of steps into method claims. Altiris Inc. v. Symantec Corp., 318 F.3d 1363, 1371 (Fed. Cir. 2003)
  19. 19. TRAP #4 – LIMITATION OF SPECIFICATION121* What Can Happen in Litigation 122* Embodiment used to limit claim scope 123* Test example used to limit claim scope 124* Feature used to limit claim scope TRAP #4 – LIMITATION OF SPECIFICATION125* How to Avoid Trap #4 126* Describe embodiments as being exemplary rather than preferred 127* Describe test examples as being exemplary rather than preferred 128* Describe feature as “may” rather than “must” be used
  20. 20. TRAP #5 – DEPENDENT CLAIMS129* Non-Infringement of Independent Claims Impacts Dependent Claims 130* Basic rule of infringement 131* Excessive reliance on dependent claims 132* Independent claims that simply build upon prior independent claims TRAP #5 – DEPENDENT CLAIMS133* Basic Rule of Infringement 134* “One who does not infringe an independent claim cannot infringe a claim dependent on (and thus containing all the limitations of) that claim.” Wahpeton Canvas Co., Inc. v. Frontier, Inc., 870 F.2d 1546, 1552 n.9 (Fed. Cir. 1989) TRAP #5 – DEPENDENT CLAIMS135* What Can Happen in Prosecution
  21. 21. 136* Excessive reliance on dependent claims 137* Independent claims that simply build on prior independent claims TRAP #5 – DEPENDENT CLAIMS138* What Can Happen in Litigation 139* Non-infringement of one or more independent claims 140* Above results in non-infringement of dependent claims TRAP #5 – DEPENDENT CLAIMS141* How to Avoid Trap #5 142* More rather than fewer independent claims 143* Independent claims that each focus on a single point of novelty
  22. 22. WERE DO YOU GO FROM HERE?144* Possible Steps 145* Prepare checklist at “completion” of application 146* Checklist contains potential litigation issues

×