1. Patent Engineering- Berkeley-Lavian 8th week 1 Patent Engineering IEOR 190G CET: Center for Entrepreneurship &Technology 8th Week Dr. Tal Lavian (408) 209-9112 Tlavian@berkeley.edu 225A Bechtel Mondays 4:00-6:00

2. 2 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

3. 3 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?

4. 4 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

5. 5 Anticipation Obviousness Indefiniteness Written Description Enablement Best Mode primarily (In)Validity Which issues involve the CLAIMS, Which the SPECIFICATION?

6.  Narrow Construction to Save Validity  Broaden Construction to show Infringement  Ordinary vs. Contextual Meaning  Contextual Meaning May Trump Ordinary Meaning  Patentee May Be His or Her “Own Lexicographer”  Disclaimer of Subject Matter  Claim Differentiation  Purpose or Goal of the Invention Canons of Claim Interpretation

7. PatentEng-Berkeley-Lavian 8th week 7 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 Is this really true?

8. PatentEng-Berkeley-Lavian 8th week 8 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.”

9. 9 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

10. 10 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”

11. 11 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)

12. 12 SECONDARY CONSIDERATIONS (1)The invention's commercial success (2) Long felt but unresolved needs (3) The failure of others (4) Skepticism by experts (5) Praise by others (6) Teaching away by others (7) Recognition of a problem (8) Copying of the invention by competitors Guess which one Accused Infringers prefer to use to challenge a patent? What about Patent Owners?

13. 13 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

14. 14 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

15. 15 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

16. 16 The Golden Age of Patents Presumption of validity strong Large verdicts / settlements abound Federal Circuit is unpredictable Threat of injection is real

17. 17 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

18. 18 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

19. 19 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

20. 20 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

21. 21 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

22. 22 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?

23. 23 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?

24. 24 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

25. 25 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