Anatomy of a Patent Claims and Claim Charts Infringement 1 Dr. Tal Lavian http://cs.berkeley.edu/~tlavian tlavian@cs.berkeley.edu UC Berkeley Engineering, CET

Anatomy of a Patent Title Filing date Field of Search References Abstract Drawings Disclosure (aka Specification) Background Brief Summary of Invention Brief Description of Drawings Detailed Description of Invention Claims 2 2

ABSTRACT TITLE Issue date ASSIGNEE Filing Date Related history INVENTORS PRIOR ART ASSIGNEE Filing Date Related history ABSTRACT Classification Numbers 3 3

Anatomy of a Patent – Title Short (<500 characters)‏ Sometimes terse or misleading Usually the wording from an independent claim Example: Slide-to-unlock patent’s title: “Unlocking a device by performing gestures on an unlock image” Slide-to-unlock patent’s first independent claim: “A method of unlocking a hand-held device [by continuously moving an unlock image]” 4 4

Anatomy of a Patent – Filing Date 6 Filing date is critical for establishing priority date for prior art Generally, patent can be invalidated by prior art existing up to one year before the priority date This was important since the U.S. used to be under first-to-invent system Courts deciding infringement cases would look to conception and reduction to practice (often filing) dates to determine who invented first

Anatomy of a Patent – Filing Date (cont.) 7 Filing date even more important now that U.S. has updated to first-to-file system Means under nearly all circumstances, first person to file patent is considered proper inventor by the law No more consideration of conception or reduction to practice All other countries have first-to-file system, as well

Anatomy of a Patent – Field of Search 8 Field of Search Numerical classifications to which patent applies or is cross-referenced These are the PTO numbering schemes, classes and sub-classes Example: Slide-to-unlock patent classifications include: 715/863: Data processing: presentation processing of document, operator interface processing, and screen saver display processing; gesture-based 345/173: Computer graphics processing and selective visual display systems; touch panel 345/179: Computer graphics processing and selective visual display systems; stylus Examiners use to locate prior art

Anatomy of a Patent – References and Abstract Other patents cited in the disclosure Optionally other material Abstract Brief description of the technical disclosure of the invention Permits the reader to quickly determine the nature and gist of the invention. Not relied upon for PTO or legal analysis However, sometimes used by judges to determine the claimed invention For this reason, it is often a paraphrase of the first claim (obviates possibility of misinterpretation) 8 8

Anatomy of a Patent – Drawings Drawings illustrate the invention, at least one required Typically show the “preferred embodiment” of each element of the invention May include block diagrams, schematics, flow-charts 9 9

Anatomy of a Patent – Drawings (cont.) 10 Must be drawn according to strict PTO rules Line width, font size, etc. Can be done with Visio or similar drawing programs Can submit preliminary drawing with initial application and follow up later with final drawings (after first office action) Good for defending patent claims and fulfilling the enablement requirement (a picture’s worth a thousand words)

Anatomy of a Patent – Disclosure: Background Describes the field of invention Short description of the area invention applies to Describes the prior art What has been done before and how the present invention differs or improves upon that Prior art may be from other patents or any other public source (old magazine articles, technical papers, text books, product literature, etc.)‏ Explains why the invention is useful Describes problem it solves or improvements it makes 11 11

Anatomy of a Patent – Disclosure: Brief Introduction Brief summary of the invention Summarizes the specific invention being claimed (however, must be complete enough not to limit scope of claims)‏ Brief description of drawings Describes what is shown in each drawing and identifies the type of drawing (e.g., block diagram, cross section, etc.) 12 12

Anatomy of a Patent – Disclosure: Detailed Description This is the main description of how the invention works Describes one or more “preferred embodiments” Also mentions other alternatives Defines terms used, which is important for claim interpretation Must be detailed enough for one skilled in the art to construct or use the invention (thus fulfilling the enablement requirement) Usually relies on detailed references to figures 13 13

Anatomy of a Patent – Claims Most important part of the patent Precisely define the boundaries of the invention Meaning of words, phrases, and punctuation is critical Court cases often turn on the interpretation of claims (often called “claim construction”) Drafting claims is a sophisticated art. Must be Narrow enough to exclude all prior art Broad enough to be useful Applies to many products or variations Hard to design around Able to survive challenges 14 14

Anatomy of a Patent – Claims: Two Basic Types 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 Dependent claims Depend on an independent claim or another dependent claim Add additional limitations (i.e., make more narrow and thus, more patentable) Example: Claim 2 – Apparatus of Claim 1 wherein the said axles are affixed to said round disks using a ball bearing assembly 15 15

Specification Claims 16 16

Anatomy of a Patent – Claims: Specific Types Activity claims: Used for processes, methods, or uses Example: claim for the method of distributing multimedia across mobile platforms Referred to as method, process, or use claims Physical entity claims Used for products (e.g., material) or apparatuses (e.g., device, system, or article) Example: claim for a device used to diagnose certain types of pancreatic cancer Referred to as product or apparatus claims 17 17

Summary of Patent Anatomy Claims are the key description of invention Disclosure describes preferred embodiment (implementation) of invention, defines terminology Filing date establishes date for considering prior art 18 18

Claim Chart 19 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 Example: Slide-to-Unlock vs. Samsung Galaxy Tab

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.

Slide-to-unlock patent claim 1 Samsung 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 Nexus features that read upon the claim elements in the opposite column) detecting a contact with the touch sensitive display at a first predefined location corresponding to an unlock image; e.g., The Galaxy Nexus has a touch screen that detects contact and which displays unlock images. 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 Nexus, 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 Nexus is unlocked. (To prove infringement, need to show each and every element of a claim.)

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

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

Patent Infringement – Defense: Patent Invalidity 4 Argue for patent invalidity: Perform prior art search to find prior art to invalidate 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

Patent Infringement – Defense: Non-infringing Use 5 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 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 no infringement

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

Patent Infringement – Basics 7 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)

Patent Infringement – Doctrine of Equivalents 8 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

Patent Infringement – Doctrine of Equivalents (cont.) 9 Purpose of DoE is to prevent potential infringers from making insignificant changes to a patented product in order to circumvent the claims There are exceptions to DoE, which include 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

Patent Infringement – Slide-to-Unlock Hypothetical 10 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

Slide-to-unlock patent claim 1 Samsung 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 inage. 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.)

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

Slide-to-Unlock Patent–Prior Art 33 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 (ie, Samsung) might cite Neonode N1m (early smartphone released in 2005) as prior art in an attempt to invalidate patent

Slide-to-Unlock Patent – Prior Art (cont.) 34 Slide-to-unlock function four minutes in

Patent Infringement – Hypothetical Samsung Defense 13 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?