1. CET: Center for Entrepreneurship &Technology
Patent Engineering
IEOR 190G
CET: Center for Entrepreneurship &Technology
5th Week
Dr. Tal Lavian
(408)
225A Bechtel
Mondays 4:00-6:00
Patent Engineering-Berkeley-Lavian
5th week

2. Class Schedule Class website this week
March 9th- Ron Laurie – Inflection Point
March 16th- Duane Valz – VP Yahoo
March 30th – Joe Beyers – VP HP
April 13th – Prof Randy Katz
April 20th – Berkeley OTL
April 27th – Timothy Teter – Cooley
May 4th – Ted Sichelman – Berkeley Law
Patent Engineering-Berkeley-Lavian
5th week

3. Project with Law School
3 units is ok
iPod screed
Work with the law school
Ted Sichelman
Potential $50,000 for prior art
Patent Engineering-Berkeley-Lavian
5th week

4. Design Patents: are issued for
Other Types of Patents
Design Patents: are issued for
Novel, non-obvious
Ornamental design in an article of manufacture
In other words, for its appearance
The term of a design patent is 14 years from the date of grant
Plant Patent
new or discovered asexually reproduced plant
PatentEng-Berkeley-Lavian
5th week

5. Types of Patents Term #s Utility Design Plant Type Is for
Function, use
20 years
6,214,874
Design
Appearance
14 years
D202,331
Plant
Asexually reproduced
PP10123
Utility: Covers inventions that are a useful process, machine, manufacture, or composition of matter – granted since 1790
Design: Covers the ornamental appearance of an article of manufacture– granted since 1843
Plant: Covers asexually reproducible plants, such as those produced by grafting or cuttings – granted since 1931
PatentEng-Berkeley-Lavian
5th week

6. Who is an Inventor?
a person who alone or in conjunction with others makes a material contribution to the conception of an invention (conceived the idea)
a person who reduces the conception to practice if it requires extraordinary skill
Non-Inventors:
Persons who implement the ideas of others
Persons who have obtained the entire idea of an invention from another are not inventors
Persons who suggest concepts without contributing to the means for carrying out the suggestion (“Wouldn’t it be nice if….”)
Patent Presetnation

7. ABSTRACT TITLE CLASSIFICATION NUMBERS
PRIOR ART
CONTINUED
INVENTORS
CLASSIFICATION
NUMBERS
ASSIGNEE
ELEMENTS OF A PATENT – all patents follow a similar format:
Title
Inventor - can be more than one
Assignee inventor transfers the rights of his patent to another person or company at the time the patent was granted, so the name appears on the patent document
Class numbers - (classification system developed by the USPTO to organize all patents into subject categories – 300 main classes, 66,000 subclasses
Prior Art References – citations to other patents, journal articles or books
Abstract summary of the technical disclosures made in the patent
ABSTRACT
PRIOR ART
REFERENCES
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8. SPECIFICATION
Specification consists of the Description and claims with parts such as Field of the Invention, Background of the Invention, Summary of the Invention, Detailed Description of the Preferred Embodiments of the Invention
Claims - describe the structure of an invention in precise terms –in one sentence, define the invention. the more precise the better
CLAIMS
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9. Specification & Claims
Specification consists of the Description and claims with parts such as
Field of the Invention,
Background of the Invention,
Summary of the Invention,
Detailed Description of the Preferred Embodiments of the Invention
Claims - describe the structure of an invention in precise terms –in one sentence, define the invention. the more precise the better
Patent Presetnation

10. Major Cases
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11. CLAIMS the claim is INVALID
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

12. 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?

13. 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.
CLAIM CONSTRUCTION
A Markman hearing.
For the JUDGE alone, even if there will later be a JURY trial.

14. Validity – or rather INVALIDITY
Vocabulary
READ ON
Prior Art
Ways to Demonstrate Invalidity ~ ISSUES
Anticipation
Obviousness
Indefiniteness
failing to provide an adequate Written Description
Enablement / failure to Enable
Best Mode / failure to disclose the Best Mode
Red = terms of art or ISSUES
Black = correct wording for the phrase: the claim was found invalid for _________

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

16. 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
How much this is true?
PatentEng-Berkeley-Lavian
5th week

17. 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.”
PatentEng-Berkeley-Lavian
5th week

18. Anticipation and Obviousness
Depends on what is in the PRIOR ART.
How do those 2 differ?
HOW MUCH ART?
What other things matter, besides the art and what it DISCLOSES?

19. 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”

20. Anticipation and Obviousness
2. What else matters besides <Prior Art>?
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)
The SECONDARY CONSIDERATIONS
Guess which one Accused Infringers prefer to use to challenge a patent?
What about Patent Owners?

21. Utility
The invention must satisfy the “useful” requirement of the patent laws
This is easy requirement for high-tech inventions
The patent system was created as a reward for inventive contributions to society, not for merely creative ideas that have no application
PatentEng-Berkeley-Lavian
5th week

22. Utility Patents What is patentable? New and useful… Process Machine
Manufacture
Composition of matter
Improvements
What is unpatentable?
Prior existing technology
PatentEng-Berkeley-Lavian
5th week

23. Utility Patent Types Two types of US Utility Patents
Provisional application
Non-Provisional application
Continuation
Divisional
CIP
PCT International
PatentEng-Berkeley-Lavian
5th week

24. The Golden Age of Patents
Presumption of validity strong
Large verdicts / settlements abound
Federal Circuit is unpredictable
Threat of injection is real
What is a patent?
Form of property – similar to “real property” (land), one can prevent others from “trespassing” on your intellectual property: i.e. can prevent them from making, using and selling the invention claimed in the patent (claims = boundaries / fence)
Exclusivity – doesn’t occur much in telecom industry
Kodak’s experience
Patent Presetnation

25. Developing a Patent Filing Strategy
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!
Freedom to operate – does not necessarily grant a right to practice the invention
For those with license potential / defensive potential, does not matter if company going to use.
Invent the future – Qualcomm Equation (4 fundamental CDMA patents)
-invent the future - could use a venture capital analogy if you like
-venture capitialists only expect one in ten investments to pay off
-but the one that pays off pays off big, paying for all the rest and more
-even so, they choose their investments carefully since it takes careful analysis to get even one in ten to pay off
-and they review their decisions at each funding round, weeding out the weaker investments and funding further where there is good potential for payoff
Patent Presetnation
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26. When to Disclose First to File Earliest Inventions Most Valuable
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
Also, earliest inventions easiest to describe
Re: early inventions, mention 1year grace period in US. Shouldn’t disclose because lose rights around world and start 1 year clock in US (which goes fast). But if you didn’t realize something was as valuable as it was can always cover in US if file w/in 1 year of disclosure. Shouldn’t rely on this though.
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27. 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
Combinations – example: coffee cup; fan blades (new material). Importance is problem solved. Contrast with spoked wheel + tire.
New Use – extendible dog leash
Improvements – selection patent; intermittent wipers
Bottom line – Possibilities endless (even if don’t fit nicely within a category – e.g. nanotechnology… biotechnololgy…)
NEVER self sensor – if value is high, disclose (even if not convinced a patentable invention – b/c standard is very low)
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28. 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
Demand for solution – some are both a cost reduction (cable and towers for new towers) and a new feature (adaptive antennas, licensing potential…)
Patent Presetnation

29. 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
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30. 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?
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31. 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?
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32. 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
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33. 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
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34. All Supreme Court except *
Major Cases
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
experimental use
All Supreme Court except *

35. All Supreme Court except *
Major Cases
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]
patentable subject matter
Knorr-Bremse*
willfulness
KSR
2007 – obviousness
All Supreme Court except *

36. All Supreme Court except *
Major Cases
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 *