CET: Center for Entrepreneurship &Technology Patent Engineering IEOR 190G CET: Center for Entrepreneurship &Technology 5th Week Dr. Tal Lavian (408)-209-9112 Tlavian@cs.berkeley.edu 225A Bechtel Mondays 4:00-6:00 Patent Engineering-Berkeley-Lavian 5th week

Class Schedule Class website this week March 9th- Ron Laurie – Inflection Point March 16th- Duane Valz – VP Yahoo March 30th – Joe Beyers – VP HP April 13th – Prof Randy Katz April 20th – Berkeley OTL April 27th – Timothy Teter – Cooley May 4th – Ted Sichelman – Berkeley Law Patent Engineering-Berkeley-Lavian 5th week

Project with Law School 3 units is ok iPod screed Work with the law school Ted Sichelman Potential $50,000 for prior art Patent Engineering-Berkeley-Lavian 5th week

Design Patents: are issued for 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 asexually reproduced plant PatentEng-Berkeley-Lavian 5th week

Types of Patents Term #s Utility Design Plant Type Is for Function, use 20 years 6,214,874 Design Appearance 14 years D202,331 Plant Asexually reproduced PP10123 Utility: Covers inventions that are a useful process, machine, manufacture, or composition of matter – granted since 1790 Design: Covers the ornamental appearance of an article of manufacture– granted since 1843 Plant: Covers asexually reproducible plants, such as those produced by grafting or cuttings – granted since 1931 PatentEng-Berkeley-Lavian 5th week

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….”) Patent Presetnation

ABSTRACT TITLE CLASSIFICATION NUMBERS PRIOR ART CONTINUED INVENTORS CLASSIFICATION NUMBERS ASSIGNEE ELEMENTS OF A PATENT – all patents follow a similar format: Title Inventor - can be more than one Assignee inventor transfers the rights of his patent to another person or company at the time the patent was granted, so the name appears on the patent document Class numbers - (classification system developed by the USPTO to organize all patents into subject categories – 300 main classes, 66,000 subclasses Prior Art References – citations to other patents, journal articles or books Abstract summary of the technical disclosures made in the patent ABSTRACT PRIOR ART REFERENCES Patent Presetnation Confidential

SPECIFICATION Specification consists of the Description and claims with parts such as Field of the Invention, Background of the Invention, Summary of the Invention, Detailed Description of the Preferred Embodiments of the Invention Claims - describe the structure of an invention in precise terms –in one sentence, define the invention. the more precise the better CLAIMS Patent Presetnation Confidential

Specification & Claims Specification consists of the Description and claims with parts such as Field of the Invention, Background of the Invention, Summary of the Invention, Detailed Description of the Preferred Embodiments of the Invention Claims - describe the structure of an invention in precise terms –in one sentence, define the invention. the more precise the better Patent Presetnation

Major Cases Patent Presetnation

CLAIMS the claim is INVALID 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

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?

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. CLAIM CONSTRUCTION A Markman hearing. For the JUDGE alone, even if there will later be a JURY trial.

Validity – or rather INVALIDITY 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 _________

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

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? PatentEng-Berkeley-Lavian 5th week

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.” PatentEng-Berkeley-Lavian 5th week

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

Anticipation and Obviousness 1. How much art? Anticipation: A single piece of prior art is ON ALL parts. 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”

Anticipation and Obviousness 2. What else matters besides <Prior Art>? 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?

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 PatentEng-Berkeley-Lavian 5th week

Utility Patents What is patentable? New and useful… Process Machine Manufacture Composition of matter Improvements What is unpatentable? Prior existing technology PatentEng-Berkeley-Lavian 5th week

Utility Patent Types Two types of US Utility Patents Provisional application Non-Provisional application Continuation Divisional CIP PCT International PatentEng-Berkeley-Lavian 5th week

The Golden Age of Patents Presumption of validity strong Large verdicts / settlements abound Federal Circuit is unpredictable Threat of injection is real What is a patent? Form of property – similar to “real property” (land), one can prevent others from “trespassing” on your intellectual property: i.e. can prevent them from making, using and selling the invention claimed in the patent (claims = boundaries / fence) Exclusivity – doesn’t occur much in telecom industry Kodak’s experience Patent Presetnation

Developing a Patent Filing Strategy 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! Freedom to operate – does not necessarily grant a right to practice the invention For those with license potential / defensive potential, does not matter if company going to use. Invent the future – Qualcomm Equation (4 fundamental CDMA patents) -invent the future - could use a venture capital analogy if you like -venture capitialists only expect one in ten investments to pay off -but the one that pays off pays off big, paying for all the rest and more -even so, they choose their investments carefully since it takes careful analysis to get even one in ten to pay off -and they review their decisions at each funding round, weeding out the weaker investments and funding further where there is good potential for payoff Patent Presetnation Confidential

When to Disclose First to File Earliest Inventions Most Valuable 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 Also, earliest inventions easiest to describe Re: early inventions, mention 1year grace period in US. Shouldn’t disclose because lose rights around world and start 1 year clock in US (which goes fast). But if you didn’t realize something was as valuable as it was can always cover in US if file w/in 1 year of disclosure. Shouldn’t rely on this though. Patent Presetnation

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 Combinations – example: coffee cup; fan blades (new material). Importance is problem solved. Contrast with spoked wheel + tire. New Use – extendible dog leash Improvements – selection patent; intermittent wipers Bottom line – Possibilities endless (even if don’t fit nicely within a category – e.g. nanotechnology… biotechnololgy…) NEVER self sensor – if value is high, disclose (even if not convinced a patentable invention – b/c standard is very low) Patent Presetnation

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 Demand for solution – some are both a cost reduction (cable and towers for new towers) and a new feature (adaptive antennas, licensing potential…) Patent Presetnation

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 Patent Presetnation

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? Patent Presetnation

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? Patent Presetnation

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 Patent Presetnation

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 Patent Presetnation

All Supreme Court except * Major Cases 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 *

All Supreme Court except * Major Cases 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 *

All Supreme Court except * Major Cases 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 *