1. US Claim Drafting Christopher J. Palermo 23 May 2006 Hickman Palermo Truong & Becker LLP Intellectual Property Law San Jose, California www.hptb-law.com

2. Hickman Palermo Truong & Becker LLP2 Overview Phillips v. AWH Corp., CAFC, July 12, 2005, www.fedcir.gov/opinions/03-1269.pdfPhillips v. AWH Corp., CAFC, July 12, 2005, www.fedcir.gov/opinions/03-1269.pdf The specification, prosecution history, and other intrinsic evidence, control claim interpretationThe specification, prosecution history, and other intrinsic evidence, control claim interpretation Dictionary definitions, trade usage, expert opinions, and other extrinsic evidence are not considered except in the absence of resolution based on intrinsic evidenceDictionary definitions, trade usage, expert opinions, and other extrinsic evidence are not considered except in the absence of resolution based on intrinsic evidence

3. Hickman Palermo Truong & Becker LLP3 The Landscape Since Phillips Federal Circuit has issued about 15 opinions that address claim interpretationFederal Circuit has issued about 15 opinions that address claim interpretation 90% have cited Phillips and relied upon it to resolve claim interpretation issues.90% have cited Phillips and relied upon it to resolve claim interpretation issues. The court very recently said that Phillips stressed the dominance of the specificationThe court very recently said that Phillips stressed the dominance of the specification

4. Hickman Palermo Truong & Becker LLP4 Five Rules Based on Recent Cases

5. Hickman Palermo Truong & Becker LLP5 Five Rules Based on Recent Cases Beware of limitations in the drawings.Beware of limitations in the drawings.

6. Hickman Palermo Truong & Becker LLP6 Ncube Corp. v. Seachange Intl Claims recited an upstream manager of a serverClaims recited an upstream manager of a server Drawings showed arrows 124, 126 with arrowheads on one endDrawings showed arrows 124, 126 with arrowheads on one end Claim dispute: whether data can go down from the upstream managerClaim dispute: whether data can go down from the upstream manager Held, upstream and the arrow do not limit data movement to one direction: The specification describes only one embodiment, and also expresses divergence …Held, upstream and the arrow do not limit data movement to one direction: The specification describes only one embodiment, and also expresses divergence …

7. Hickman Palermo Truong & Becker LLP7 Five Rules Based on Recent Cases Beware of limitations in the drawings. Use no arrowheads, or arrowheads on both ends.Beware of limitations in the drawings. Use no arrowheads, or arrowheads on both ends. Do not mix method steps into apparatus claims.Do not mix method steps into apparatus claims.

8. Hickman Palermo Truong & Becker LLP8 IPLX Holdings v. Amazon.com The system of claim 2 [including an input means] wherein the predicted transaction information comprises X and Y, and the user uses the input means to either change the predicted transaction information or accept the displayed X and Y.The system of claim 2 [including an input means] wherein the predicted transaction information comprises X and Y, and the user uses the input means to either change the predicted transaction information or accept the displayed X and Y. A seller of the apparatus would not know from the claim whether it might also be liable for contributory infringement because a buyer later performs the methodA seller of the apparatus would not know from the claim whether it might also be liable for contributory infringement because a buyer later performs the method

9. Hickman Palermo Truong & Becker LLP9 IPLX Holdings v. Amazon.com Recite structure insteadRecite structure instead The system of claim 2 [including an input means] wherein the predicted transaction information comprises X and Y, and wherein the input means comprises means for receiving user input indicating either a change to the predicted transaction information or user input indicating acceptance of the displayed X and Y.The system of claim 2 [including an input means] wherein the predicted transaction information comprises X and Y, and wherein the input means comprises means for receiving user input indicating either a change to the predicted transaction information or user input indicating acceptance of the displayed X and Y. Full discussion: CIPA Journal, January 2006Full discussion: CIPA Journal, January 2006

10. Hickman Palermo Truong & Becker LLP10 Five Rules Based on Recent Cases Beware of limitations in the drawings. Use no arrowheads, or arrowheads on both ends.Beware of limitations in the drawings. Use no arrowheads, or arrowheads on both ends. Do not mix method steps into apparatus claims. All mixed claims are now suspect.Do not mix method steps into apparatus claims. All mixed claims are now suspect. If separate parts of a process could be implemented in separate countries, use system or apparatus claims instead.If separate parts of a process could be implemented in separate countries, use system or apparatus claims instead.

11. Hickman Palermo Truong & Becker LLP11 NTP, Inc. v. Research in Motion Ltd. Claims to an electronic mail system reciting equipment located in the US and a relay in Canada are infringed by US usersClaims to an electronic mail system reciting equipment located in the US and a relay in Canada are infringed by US users –infringing use of a claimed system occurs in the place at which the system as a whole is put into service i.e., the end users location Claims to a process implemented with the same equipment and relay are not infringedClaims to a process implemented with the same equipment and relay are not infringed –All steps of the method must be performed in the US

12. Hickman Palermo Truong & Becker LLP12 Five Rules Based on Recent Cases Beware of limitations in the drawings. Use no arrowheads, or arrowheads on both ends.Beware of limitations in the drawings. Use no arrowheads, or arrowheads on both ends. Do not mix method steps into apparatus claims. All mixed claims are now suspect.Do not mix method steps into apparatus claims. All mixed claims are now suspect. If separate parts of a process could be implemented in separate countries, use system or apparatus claims instead.If separate parts of a process could be implemented in separate countries, use system or apparatus claims instead. If specification discloses one embodiment, claim cannot be broader than that embodimentIf specification discloses one embodiment, claim cannot be broader than that embodiment

13. Hickman Palermo Truong & Becker LLP13 Lizardtech, Inc. v. Earth Resource Mapping, Inc. Specification describes one way for compressing digital images by using a seamless discrete wavelet transform (DWT).Specification describes one way for compressing digital images by using a seamless discrete wavelet transform (DWT). Claim 21 covers all DWTsdoes not recite seamlessClaim 21 covers all DWTsdoes not recite seamless The trouble with allowing claim 21 to cover all ways of performing DWT-based compression processes that lead to a seamless DWT is that there is no support for such a broad claim in the specification.The trouble with allowing claim 21 to cover all ways of performing DWT-based compression processes that lead to a seamless DWT is that there is no support for such a broad claim in the specification.

14. Hickman Palermo Truong & Becker LLP14 Lizardtech, Inc. v. Earth Resource Mapping, Inc. Public policy and the notice function of claims:Public policy and the notice function of claims: Inventor will not be given claim scope far greater than what a skilled artisan would understand the inventor to possess or greater than what is enabledInventor will not be given claim scope far greater than what a skilled artisan would understand the inventor to possess or greater than what is enabled While a claim can use a broad term to encompass 2 or more embodiments given in the specification, when only 1 way is disclosed the use of broader terms may lead to invalidityWhile a claim can use a broad term to encompass 2 or more embodiments given in the specification, when only 1 way is disclosed the use of broader terms may lead to invalidity

15. Hickman Palermo Truong & Becker LLP15 Five Rules Based on Recent Cases Beware of limitations in the drawings. Use no arrowheads, or arrowheads on both ends.Beware of limitations in the drawings. Use no arrowheads, or arrowheads on both ends. Do not mix method steps into apparatus claims. All mixed claims are now suspect.Do not mix method steps into apparatus claims. All mixed claims are now suspect. If separate parts of a process could be implemented in separate countries, use system or apparatus claims instead.If separate parts of a process could be implemented in separate countries, use system or apparatus claims instead. If specification discloses one embodiment, claim cannot be broader than that embodimentIf specification discloses one embodiment, claim cannot be broader than that embodiment A concretely expansive specification may expand the scope of an unintentionally narrow claimA concretely expansive specification may expand the scope of an unintentionally narrow claim

16. Hickman Palermo Truong & Becker LLP16 Lava Trading, Inc. v. Sonic Trading A data processing method for providing trading information to traders in a security or commodity from two or more alternative trading systems, comprising the steps of: receiving order book information from each participating alternative trading system in order book information protocols native to the particular alternative trading system; converting the information to a common system order book protocol; integrating the order book information from each alternative trading system into a single order book; distributing the combined order book to the traders in the common system order book protocol; and displaying said combined order book to the traders

17. Hickman Palermo Truong & Becker LLP17 Lava Trading, Inc. v. Sonic Trading Specification described displaying only a subset of the combined information The claim preamble recited a security or commodity, suggesting fewer than all Potentially problematic claim was saved by an expansive specification with several different examples

18. Hickman Palermo Truong & Becker LLP18 Nystrom v. Trex Co. Inc. Claim: A board for use in constructing a flooring surface for exterior use, said board having … Specification exclusively described boards cut from wood logs and addressed problems of water penetration into wood. Drawings show grain Trex made plastic resin-based synthetic boards not cut from logs Potentially problematic claim was not saved by inventors failure in the specification to identify synthetic lumber as an alternative Last paragraph of specification was boilerplate broadening languageignored

19. Hickman Palermo Truong & Becker LLP19 Five Rules Based on Recent Cases Beware of limitations in the drawings. Use no arrowheads, or arrowheads on both ends.Beware of limitations in the drawings. Use no arrowheads, or arrowheads on both ends. Do not mix method steps into apparatus claims. All mixed claims are now suspect.Do not mix method steps into apparatus claims. All mixed claims are now suspect. If separate parts of a process could be implemented in separate countries, use system or apparatus claims instead.If separate parts of a process could be implemented in separate countries, use system or apparatus claims instead. If specification discloses one embodiment, claim cannot be broader than that embodimentIf specification discloses one embodiment, claim cannot be broader than that embodiment Sprinkle the specification with creative, possible alternatives beyond what the inventor presently contemplatesSprinkle the specification with creative, possible alternatives beyond what the inventor presently contemplates

20. Hickman Palermo Truong & Becker LLP20 Claim Examples

21. Hickman Palermo Truong & Becker LLP21 Thank you Christopher J. Palermo Hickman Palermo Truong & Becker LLP 2055 Gateway Place Suite 550 San Jose, CA 95110 408.414.1202 cpalermo@hptb-law.com