AIPLA Practical Patent Prosecution Basic Training for New Lawyers Claims Drafting Workshop: Electrical, Computer, and Software Systems Rick A. Toering | Thursday, August 26, 2010 | Alexandria, VA

2 Topics Covered Patentable Subject Matter Forms of Claims Drafting Considerations Exercises

3 Patentable Subject Matter 35 U.S.C. § Inventions patentable: –Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor... –“[S]tatutory subject... includes[s] anything under the sun that is made by man.” Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980).

4 Patentable Subject Matter A machine is “a concrete thing, consisting of parts or of certain devices and combinations of devices.” Burr v. Duryee, 68 U.S. (1 Wall.) 531, 570 (1863). A manufacture is “the production of articles for use from raw or prepared materials by giving to these materials new forms, qualities, properties or combinations, whether by hand labor or by machinery.” Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980). A claim that requires one or more acts to be performed defines a process. However, not all processes are statutory under 35 U.S.C In re Schrader, 22 F.3d 290, 296 (Fed. Cir. 1994).

5 Patentable Subject Matter In re Bilski A method for managing the consumption risk costs of a commodity sold by a commodity provider at a fixed price comprising the steps of: (a) initiating a series of transactions between said commodity provider and consumers of said commodity wherein said consumers purchase said commodity at a fixed rate based upon historical averages, said fixed rate corresponding to a risk position of said consumer; (b) identifying market participants for said commodity having a counter-risk position to said consumers; and (c) initiating a series of transactions between said commodity provider and said market participants at a second fixed rate such that said series of market participant transactions balances the risk position of said series of consumer transactions.

6 Patentable Subject Matter In re Bilski Federal Circuit Created the So-Called “MOT Test” or “Machine or Transformation Test” In order for a process to be statutory subject matter, the process must: 1) be tied to a particular machine or apparatus, or 2) transform a particular article into a different state or thing In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en banc)

7 Patentable Subject Matter In re Bilski Supreme Court Rejected the MOT Test as the Sole Test for Determining Statutory Subject Matter Instead, the Supreme Court Held that the Bilski Claims were Directed Toward an Abstract Idea Bilski v. Kappos, No , 561 U.S. ___ (2010)

8 Patentable Subject Matter In re Bilski Supreme Court Declined to Decide Whether “Business Method Patents” are Statutory Subject Matter Let the Federal Circuit Define the Scope of Business Methods that Comprise “Patent Eligible” Subject Matter

9 USPTO’s Interim Guidelines PTO has published interim guidelines for determining subject matter eligibility. Guidelines presumptively adopt the MOT test, unless the claims are clearly directed toward an excluded category (abstract idea, law of nature, mathematical algorithm) See Interim Guidelines, Federal Register, vol. 75, no. 143, July 27, 2010

10 Bilski Claim 1.A method or comprising: ; ; ; ; and {whereby the }.

11 Apparatus Claim 1.An apparatus for comprising: ; ; ; ; and, {whereby the }.

12 Apparatus Claim - Example 1. A cell phone comprising: a receiver that receives an incoming signal; a demodulator that generates a demodulated signal from the incoming signal; a voice decoder that generates an audio signal from the demodulated signal; and a speaker that produces an audible signal from the audio signal.

13 Method Claim 1.A method for comprising {the steps of}: ; ; ; ; and, {whereby the }.

14 Method Claim - Example 1. A method for wireless communication comprising: receiving an incoming signal; demodulating the incoming signal to generate a demodulated signal; decoding the demodulated signal to produce an audio signal; and generating an audible signal from the audio signal.

15 Computer Program Products Unlike method claims, which require the steps recited in the claim to actually be performed for direct infringement, computer program product claims read on a computer program stored in a tangible medium (e.g., floppy disks, compact discs, hard drives, etc.). A party selling or distributing products on, for example, a CD-ROM disc would directly infringe such a claim giving the patentee a simpler case for proving infringement and a concrete target for injunctive relief. Derived from In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995).

16 Computer Program Product Form 1 1.A computer program product for enabling a computer to comprising: software instructions that enable the computer to perform predetermined operations; and a tangible computer readable storage medium bearing the software instructions; the predetermined operations including:,,,, and, wherein {or whereby} the computer.

17 Computer Program Product Form 2 1.A computer program product for enabling a computer to comprising: computer readable program code means for causing a computer to computer readable program code means for causing a computer to ; computer readable program code means for causing a computer to computer readable program code means for causing a computer to ; and computer readable program code means for causing a computer to ; wherein {or whereby} the computer.

18 Computer System Claim 1.A computer system adapted to comprising: a processor, and a tangible memory storage including software instructions that cause the computer system to perform:,,,, and, wherein {or whereby} the computer.

19 Drafting Considerations What is the invention? What is the prior art? Who infringes the claim?

20 What is the Invention? Determine Key Innovative Element(s) Determine Alternative Implementation(s) Determine Commercial Implementation(s) Determine Why Invention is Important Draft Claims with Varying Degrees of Scope (Broad, Medium, Narrow)

21 What is the Prior Art? Gather Prior Art Search Results (if any) Ascertain Inventor’s Knowledge of Art Ascertain Client’s Knowledge of Art Draft Claims to Exclude Known Prior Art

22 Exercise #1 – The Problem Inventor has two TVs in order to simultaneously watch two shows

23 Exercise #1 – Invention Superimpose one image on another to view both on one television.

24 Exercise #1 – Implementation A/D Video Memory D/A Display V pip CPU V pip Switch V S Vs Vs

25 Exercise #1 – Invention Not aware of any alternative embodiments. All elements are “critical” except A/D and D/A converters not needed if PIP image is digital. Inventor thinks only commercial use is for televisions.

26 Exercise #1 – Draft Claim

27 Exercise #1 – Sample Claim 1 A system for simultaneously displaying a first image and a second image comprising: a memory device that stores a first image signal; a switch that receives said first image signal from said memory device and that receives a second image signal, said switch generating and outputting a combined image signal that includes at least a portion of said first image signal and said second image signal; a display device that receives said combined image signal from said switch and that displays a combined image; and a controller that controls the operation of said switch to generate said combined image signal.

28 Exercise #1 – Critique of Claim 1 Use of memory may be too narrow. Switch can be replaced with alternatives such as storing both images in memory. Since display is required, semiconductor manufacturer is not a direct infringer. Controller may not be necessary.

29 Exercise #1 – Draft Broader Claim

30 Exercise #1 – Sample Claim 2 2. A method for generating a combined image signal from a first image signal and a second image signal comprising: receiving the first image signal from a first source; receiving the second image signal from a second source; and generating a combined image signal that includes at least portions of the first image signal and the second image signal.

31 Exercise #1 – Cited Reference V S1 V S4 V S1 V S2 V S4 V S3 Display Switch Control Unit V S3 V S2 V S1

32 Exercise #1 – Amended Claim 1 (Amended) A system for simultaneously displaying a first image and a second image comprising: a memory device that stores a first image signal; a switch that receives said first image signal from said memory device and that receives a second image signal, said switch generating and outputting a combined image signal that includes at least a portion of said first image signal and said second image signal; a display device that receives said combined image signal from said switch and displaying a combined image, wherein in said combined image, the second image at least partially overlaps the first image; and a controller that controls the operation of said switch to generate said combined image signal.

33 Who Infringes the Claim? Draft Claims that Can Be Infringed Direct Claims Toward Infringers Confine Infringement to an Entity

34 Draft Claims Toward Infringers Deep Pockets Choke Points/Toll Gates Likely Competitive Activity Consumables Recurring Activities (e.g., Sales, Use) Commercial Units Chain of Commerce

35 Confine Infringement to an Entity Direct vs. Indirect Infringement Transmit/Receiver Applications –System Claims –Transmit Side Claims –Receive Side Claims Client/Server Applications –System Claims –Client Side Claims –Server Side Claims

36 Example 1.A method for purchasing widgets comprising: providing a list including a plurality of widgets available for purchase; selecting one of said plurality of widgets to purchase; entering a quantity of said selected one of said plurality of widgets and billing information; sending indicia identifying said selected one of said plurality of widgets, said quantity, and said billing information; receiving said indicia, said quantity and said billing information; processing said billing information; and delivering said quantity of said selected one of said widgets.

37 Example – Who Infringes? 1.A method for purchasing widgets comprising: providing a list including a plurality of widgets available for purchase; SERVER FUNCTION? CLIENT FUNCTION? selecting one of said plurality of widgets to purchase; USER FUNCTION entering a quantity of said selected one of said plurality of widgets and billing information; USER FUNCTION sending indicia identifying said selected one of said plurality of widgets, said quantity, and said billing information; CLIENT FUNCTION receiving said indicia, said quantity and said billing information; processing said billing information; and SERVER FUNCTION delivering said quantity of said selected one of said widgets. UPS?

38 Example – Client Side 1.A method for purchasing widgets in a client-server environment comprising: receiving a list including a plurality of widgets available for purchase from a server; presenting said list to a user; in response to the user selecting one of said plurality of widgets for purchase, requesting a quantity of said selected one of said plurality of widgets to purchase and billing information; receiving said quantity and said billing information from the user; and sending indicia identifying said selected one of said plurality of widgets, said quantity, and said billing information to the server.

39 Example – Server Side 1.A method for selling widgets in a client-server environment comprising: sending/providing a list including a plurality of widgets available for purchase to a client; in response to a user selecting one of said plurality of widgets for purchase at the client, receiving indicia identifying said selected one of said plurality of widgets, a quantity of said selected one of said plurality of widgets to purchase, and billing information associated with the user from the client; processing said billing information; and causing said quantity of said selected one of said widgets to be delivered to the user.

40 Examples – Other “Infringers” System Claims User Interface Website hosts and ISPs Wireless network providers Others?

41 Exercise #2 Draft an independent claim directed toward a third-party virtual store front disposed between the client and the server. Draft dependent claims where: a) third-party handles billing b) seller handles billing

42 Exercise #2 – Work Space

43 Exercise #2 – Sample Claim 1.A method for facilitating a purchase of widgets using an intermediary disposed between a client and a server comprising: receiving a list including a plurality of widgets offered for sale from the server associated with at least one seller of said plurality of widgets; providing said list to the client associated with a buyer of at least one of said plurality of widgets; in response to the buyer selecting one of said plurality of widgets to purchase, receiving, from the client, indicia identifying said selected one of said plurality of widgets, a quantity of said selected one of said plurality of widgets to purchase, and billing information associated with the buyer; and providing, to the server associated with the seller of said selected one of said plurality of widgets, indicia identifying said selected one of said plurality of widgets, said quantity of said selected one of said plurality of widgets to purchase, and at least a portion of said billing information associated with the buyer.

44 Exercise #2 – Sample Dep. Claims 2.The method of claim 1, further comprising billing, by the intermediary, the buyer for said quantity of said selected one of said plurality of widgets using said billing information. 3.The method of claim 1, wherein said providing further comprises providing billing information associated with the buyer to the server so that the seller can bill the buyer for said quantity of said selected one of said plurality of widgets.

45 Exercise #3 – The Problem Processing Character Strings in Computers String_X = “John Smith” Array_Y = “Kate Smith” “Bob Jones” “John Jones” “John Smith”

46 Exercise #3 – The Problem Conventionally, Character Strings are Processed on a Character-by-Character Basis String_X = [“J”, “o”, “h”, “n”, “ ”, “S”, “m”, “i”, “t”, “h”] Array_Y = [“K”, “a”, “t”, “e”, “ ”, “S”, “m”, “i”, “t”, “h”] [“B”, “o”, “b”, “ ”, “J”, “o”, “n”, “e”, “s”] [“J”, “o”, “h”, “n”, “ ”, “J”, “o”, “n”, “e”, “s”] [“J”, “o”, “h”, “n”, “ ”, “S”, “m”, “i”, “t”, “h”]

47 Exercise #3 – The Invention Convert the string (comprised of a plurality of characters) into a single number. This can be accomplished by selecting a number system having a radix at least as large as the number of different possible characters in the string. Each of the possible characters can be assigned to a symbol in the number system. Then, a single number can be expressed based on the value of the character and its position in the original string.

48 Exercise #3 – The Invention For Example:

49 Exercise #3 – The Invention For Example (cont’d):

50 Exercise #3 – Discussion What is the Invention? Is this Patent Eligible Subject Matter? What are Possible Alternate Embodiments? What are Possible Applications?

51 Exercise #3 – Considerations Merely an Algorithm? Is There a Transformation? Can the Method be Performed on Paper? Mental Process vs. Computer Process

Rick A. Toering Partner/IP | Tysons Corner, Virginia