1. Nuts and Bolts of Patent Law presented by: Shamita Etienne-Cummings setienne@whitecase.com April 5, 2016

2. WHITE & CASE LLP What is a Patent? Property Right that protects innovations and improvements in technology Provides the Right to Exclude Others from making, using, selling or importing into the U.S. the patented technology Types of Patents Utility Design Plant 23 June 20162

3. WHITE & CASE LLP 23 June 20163 How Long Does a Patent Last?  If filed and granted before June 8, 1995  17 years from issue date  If filed before, but granted after, June 8, 1995  17 years from issue date or 20 years from first filing date  If filed and granted after June 8, 1995  20 years from first relied upon filing date

4. WHITE & CASE LLP 23 June 20164 Anatomy of a Patent: Title Method for making a data transmission connection from a computer to a mobile Communication Network for Transmission of Analog and/or Digital Signals

5. WHITE & CASE LLP 23 June 20165 Anatomy of a Patent: Filing Date

6. WHITE & CASE LLP Anatomy of a Patent: References Cited 23 June 20166

7. WHITE & CASE LLP Anatomy of a Patent: Abstract

8. WHITE & CASE LLP Anatomy of a Patent  Written description  Describes the invention and why it is novel  Teaches how to make and use the invention  Typically contains working examples 23 June 20168

9. WHITE & CASE LLP Anatomy of a Patent - Drawings 23 June 20169

10. WHITE & CASE LLP Anatomy of a Patent  The “Claims”  Describe the boundaries of protection 23 June 201610

11. WHITE & CASE LLP 23 June 201611 Utility - 35 U.S.C. § 101  What can be patented?  Virtually any invention “made by man” is qualified to be patented in the United States  An invention must be a new and useful process, machine, article of manufacture or composition of matter, or any new and useful improvement of known processes, etc.  Generally speaking, claims directed to essentially mathematical algorithms, printed matter, or scientific principles fail to satisfy the utility requirement  Abstract Idea made with generic components is NOT patentable ( Alice )  A commercially successful product is not necessary.  An invention does not lack utility even if it is not perfect or performs crudely.

12. WHITE & CASE LLP 23 June 201612 Written Description and Enablement - 35 U.S.C. § 112  Enablement  An invention must be described in the specification in such full, clear and concise terms as to enable a person “skilled in the art” to which the invention most closely pertains to practice the invention, without undue experimentation  Written Description  The claimed subject matter must be fully supported by the specification as originally filed  Claims, as amended during the prosecution of the application, may not introduce “new matter” into the application

13. WHITE & CASE LLP 23 June 201613  The relevant time period for determining if the “enablement” requirement is satisfied is the date of filing the application — later occurring developments are of no significance regarding what one of skill in the art would understand as of the filing date  Better to err on the side of including additional information/embodiments in the original specification — such additional information/ embodiments may be utilized to overcome prior art unknown to applicant as of the filing date Written Description and Enablement - 35 U.S.C. § 112

14. WHITE & CASE LLP 23 June 201614 Best Mode - 35 U.S.C. § 112  Must disclose not only how to practice the invention, but also the “best mode” or preferred way of practicing the invention  Quid Pro Quo - Patentee receives patent grant in exchange for disclosing the best way of practicing the invention  Only concerned with the inventor’s state of mind - if he/she believed or knew there was a “best” mode of practicing the invention  The preferred mode at the time of filing the application

15. WHITE & CASE LLP 23 June 201615 Novelty - 35 U.S.C. § 102  U.S. is a "first-to-file” system for any patent filed or issued on or after March 16, 2013  § 102(a)  if the claimed invention was either known or used by others [in the U.S.] or patented or described in a printed publication anywhere in the world prior to the invention by the applicant, then no patent can issue  § 102(b)  if the invention is described in a printed publication or patent in the U.S. or foreign country more than one year prior to the filing date in the U.S., then absolute bar  “on sale” or “public use” bar limited to actions taken in U.S.

16. WHITE & CASE LLP 23 June 201616 Novelty - 35 U.S.C. § 102 (cont’d)  § 102(d)  precludes issuance of a patent if application was first filed in a non-U.S. country more than 12 months prior to the U.S. filing and the non-U.S. based application issued prior to the U.S. filing date

17. WHITE & CASE LLP 23 June 201617 Non-Obviousness — 35 U.S.C. § 103  Purpose of § 103 is to prevent the grant of patents on inventions that represent an insignificant advance over that which is already known  Test for obviousness  determine scope and content of prior art  determine differences between prior art and present invention  would variations be obvious choices to those of “skill in the art”

18. WHITE & CASE LLP 23 June 201618 Non-Obviousness - 35 U.S.C. § 103 (cont’d)  Prior art does not include information communicated between members of a research team or employees of the same company, if at the time of the invention, both parties are employed by the company and under a duty to assign the invention to the same company

19. WHITE & CASE LLP 23 June 201619 Inventorship  Must be someone who made a substantive contribution to at least one of the claims of the application  Typically, for joint-inventorship, there must be at least some communication, direct or indirect, between inventors - two persons totally unaware of the other’s work, no joint inventorship  Two stages of the inventive process: 1) conception and 2) reduction to practice - joint inventors can be any combination of the two  Mere supervision of someone who “conceives” or “reduces” the invention to practice does not make supervisor an inventor  Contributions of joint inventors do not have to be equal

20. WHITE & CASE LLP 23 June 201620 Patent Infringement  What must a patentee show in order to prove infringement?  Direct Infringement  Accused product of a defendant party practices each an every element of a claim  Indirect Infringement  A defendant party actively and/or knowingly induces another to directly infringe each and every element of a patent claim  Joint Infringement  No single party practices each and every element of a claim. However, if Party A practices some elements of the claim, and “directs or controls” Party B to practice the remaining elements, Party A may be liable for infringement.  Infringement under the Doctrine of Equivalents  Even if there is no literal infringement under one of these theories, a Party may still be liable for infringement if there are “insubstantial differences” between the claim invention and the accused product.

21. WHITE & CASE LLP 23 June 201621 Patent Infringement – Claim Construction  Generally courts will construe (e.g., determine an appropriate definition for) for a claim term because:  Why?  Claim terms may not be understood by lay persons  Claim construction provides clarity to the meaning of a claim term  Helps determine the appropriate scope of a claim  Helps narrow the issues in dispute  When?  In many district courts where patent infringement cases are common, the judge will hold a “Markman” hearing to determine the meaning of claim terms during the first half of the case.  Other courts do not hold Markman hearings. Meanings of claim terms are decided at the end of the case.  Who?  Judge decides meaning of claim terms.  Attorneys brief positions.  At times, experts may present views of claim terms.

22. WHITE & CASE LLP 23 June 201622 Claim Construction  What does the court use to construe claims?  Intrinsic Evidence  Patent – Description, drawings, and other claims  Patentees are their own lexicographer.  The patent itself may be used as evidence to narrow or broaden a claim term relative to its ordinary meaning.  The patent itself may be used as evidence that the ordinary meaning of a claim term applies.  Prosecution History – The arguments made by both the examiner and the patent applicant before the patent issued.  The prosecution history may be used in the same manner as the patent itself.

23. WHITE & CASE LLP 23 June 201623 Claim Construction  What does the court use to construe claims?  Extrinsic Evidence  Dictionaries  Technical references  Expert testimony

24. WHITE & CASE LLP 23 June 201624 Claim Construction Strategic Considerations  The broader a claim is, the more likely it will be infringed. However, it will be more susceptible to invalidation.  The narrower a claim is, the more likely it will not be infringed and valid.  Patentees generally try to construe claim terms as broad as possible while preserving validity.  In most cases, defendants will try to construe claim terms narrowly in order to avoid infringement.  In some cases, defendants will try to construe claim terms as broad as possible in support of an invalidity argument.

25. WHITE & CASE LLP 23 June 201625 Patent Infringement Defenses  What are the common defenses for overcoming infringement?  Accused product does not infringe because:  It is missing a certain claim element  Remember, a party may still be liable for indirect or joint infringement  Under a certain interpretation of a claim term, the accused product does not infringe.  This is the most common argument made by a defendant.  Patent claim is invalid  Over prior art.  Not supported by the specification.  Patent is unenforceable  Inequitable conduct before the United States Patent Office

26. WHITE & CASE LLP 23 June 201626 Invention Conceived and Documented Provisional Application filed (optional) 0 year U.S. Patent Application Filed 26 months First Office Action on the Merits Patent Issues 1 st Maintenance Fee 2nd Maintenance Fee 3rd Maintenance Fee Patent Expires (subject to patent term extension) 36 months 7 years 11 years 15 years 20 years 20+ years Typical Life of a Patent Patent Term Extension Do not suppress, conceal or abandon Up to 1 year Avg. 25.7 months Average 35.3 months Enforceable period – Monetization by litigation or licensing 4 years from issue 4 years (8 years from issue) Patent Term Extension based on USPTO delay 4 years (12 years from issue)

27. WHITE & CASE LLP Case Study – Understanding Infringement 23 June 201627

28. WHITE & CASE LLP Case Study – ‘190 Patent Claim 1 23 June 201628

29. WHITE & CASE LLP Case Study – Figure 11 A 23 June 201629

30. WHITE & CASE LLP 23 June 201630 Questions??

31. WHITE & CASE LLP 23 June 201631 Worldwide. For Our Clients. White & Case, a New York State registered limited liability partnership, is engaged in the practice of law directly and through entities compliant with regulations regarding the practice of law in the countries and jurisdictions in which we have offices. www.whitecase.com