1. Anatomy of a Patent Claims and Claim Charts Infringement1
Dr. Tal Lavian
UC Berkeley Engineering, CET

2. Anatomy of a Patent Title Filing date Field of Search References
Abstract
Drawings
Disclosure (aka Specification)
Background
Brief Summary of Invention
Brief Description of Drawings
Detailed Description of Invention
Claims 2 2

3. ABSTRACT TITLE Issue date ASSIGNEE Filing Date Related history
INVENTORS
PRIOR ART
ASSIGNEE
Filing Date
Related
history
ABSTRACT
Classification
Numbers 3 3

4. Anatomy of a Patent – Title
Short (<500 characters)‏
Sometimes terse or misleading
Usually the wording from an independent claim
Example:
Slide-to-unlock patent’s title: “Unlocking a device by performing gestures on an unlock image”
Slide-to-unlock patent’s first independent claim: “A method of unlocking a hand-held device [by continuously moving an unlock image]” 4 4

5. Anatomy of a Patent – Filing Date6
Filing date is critical for establishing priority date for prior art
Generally, patent can be invalidated by prior art existing up to one year before the priority date
This was important since the U.S. used to be under first-to-invent system
Courts deciding infringement cases would look to conception and reduction to practice (often filing) dates to determine who invented first

6. Anatomy of a Patent – Filing Date (cont.)7
Filing date even more important now that U.S. has updated to first-to-file system
Means under nearly all circumstances, first person to file patent is considered proper inventor by the law
No more consideration of conception or reduction to practice
All other countries have first-to-file system, as well

7. Anatomy of a Patent – Field of Search8
Field of Search
Numerical classifications to which patent applies or is cross-referenced
These are the PTO numbering schemes, classes and sub-classes
Example: Slide-to-unlock patent classifications include:
715/863: Data processing: presentation processing of document, operator interface processing, and screen saver display processing; gesture-based
345/173: Computer graphics processing and selective visual display systems; touch panel
345/179: Computer graphics processing and selective visual display systems; stylus
Examiners use to locate prior art

8. Anatomy of a Patent – References and Abstract
Other patents cited in the disclosure
Optionally other material
Abstract
Brief description of the technical disclosure of the invention
Permits the reader to quickly determine the nature and gist of the invention.
Not relied upon for PTO or legal analysis
However, sometimes used by judges to determine the claimed invention
For this reason, it is often a paraphrase of the first claim (obviates possibility of misinterpretation) 8 8

9. Anatomy of a Patent – Drawings
Drawings illustrate the invention, at least one required
Typically show the “preferred embodiment” of each element of the invention
May include block diagrams, schematics, flow-charts 9 9

10. Anatomy of a Patent – Drawings (cont.)10
Must be drawn according to strict PTO rules
Line width, font size, etc.
Can be done with Visio or similar drawing programs
Can submit preliminary drawing with initial application and follow up later with final drawings (after first office action)
Good for defending patent claims and fulfilling the enablement requirement (a picture’s worth a thousand words)

11. Anatomy of a Patent – Disclosure: Background
Describes the field of invention
Short description of the area invention applies to
Describes the prior art
What has been done before and how the present invention differs or improves upon that
Prior art may be from other patents or any other public source (old magazine articles, technical papers, text books, product literature, etc.)‏
Explains why the invention is useful
Describes problem it solves or improvements it makes 11 11

12. Anatomy of a Patent – Disclosure: Brief Introduction
Brief summary of the invention
Summarizes the specific invention being claimed (however, must be complete enough not to limit scope of claims)‏
Brief description of drawings
Describes what is shown in each drawing and identifies the type of drawing (e.g., block diagram, cross section, etc.) 12 12

13. Anatomy of a Patent – Disclosure: Detailed Description
This is the main description of how the invention works
Describes one or more “preferred embodiments”
Also mentions other alternatives
Defines terms used, which is important for claim interpretation
Must be detailed enough for one skilled in the art to construct or use the invention (thus fulfilling the enablement requirement)
Usually relies on detailed references to figures 13 13

14. Anatomy of a Patent – Claims
Most important part of the patent
Precisely define the boundaries of the invention
Meaning of words, phrases, and punctuation is critical
Court cases often turn on the interpretation of claims (often called “claim construction”)
Drafting claims is a sophisticated art. Must be
Narrow enough to exclude all prior art
Broad enough to be useful
Applies to many products or variations
Hard to design around
Able to survive challenges 14 14

15. Anatomy of a Patent – Claims: Two Basic Types
Independent claims
Stand by themselves
Comprise a set of limitations (or elements) that define the scope of an invention
Example: Claim 1 - An apparatus for moving objects consisting of one or more round disks with axles connecting said round disks
Dependent claims
Depend on an independent claim or another dependent claim
Add additional limitations (i.e., make more narrow and thus, more patentable)
Example: Claim 2 – Apparatus of Claim 1 wherein the said axles are affixed to said round disks using a ball bearing assembly 15 15

16. Specification
Claims 16 16

17. Anatomy of a Patent – Claims: Specific Types
Activity claims:
Used for processes, methods, or uses
Example: claim for the method of distributing multimedia across mobile platforms
Referred to as method, process, or use claims
Physical entity claims
Used for products (e.g., material) or apparatuses (e.g., device, system, or article)
Example: claim for a device used to diagnose certain types of pancreatic cancer
Referred to as product or apparatus claims 17 17

18. Summary of Patent Anatomy
Claims are the key description of invention
Disclosure describes preferred embodiment (implementation) of invention, defines terminology
Filing date establishes date for considering prior art 18 18

19. Claim Chart 19
Element-by-element breakdown of a patent’s claims compared to an allegedly infringing product
Often used by prosecution for infringement analysis
Very useful for visualizing which aspects of the claims are read upon by potentially infringing devices
Example: Slide-to-Unlock vs. Samsung Galaxy Tab

20. US# 8046721— Slide to Unlock — Claim 1
1. (1.0) A method of unlocking a hand-held electronic device, the device including a touch-sensitive display, the method comprising: (1.1) detecting a contact with the touch-sensitive display at a first predefined location corresponding to an unlock image; (1.2) continuously moving the unlock image on the touch-sensitive display (1.2.1) in accordance with movement of the contact (1.2.2) while continuous contact with the touch screen is maintained, (1.2.3) wherein the unlock image is a graphical, interactive user-interface object ( ) with which a user interacts in order to unlock the device; and (1.3) unlocking the hand-held electronic device if the moving the unlock image on the touch-sensitive display results in movement of the unlock image from the first predefined location to a predefined unlock region on the touch-sensitive display.

21. Slide-to-unlock patent claim 1
Samsung Galaxy Tab
A method of unlocking a hand held electronic device device including a touch sensitive display the method comprising:
(Each of these rows would be filled with Galaxy Nexus features that read upon the claim elements in the opposite column)
detecting a contact with the touch sensitive display at a first predefined location corresponding to an unlock image;
e.g., The Galaxy Nexus has a touch screen that detects contact and which displays unlock images.
continuously moving the unlock image on the touch sensitive display in accordance with movement of the contact while continuous contact with the touch screen is maintained wherein the unlock image is a graphical interactive user interface object with which a user interacts in order to unlock the device; and
e.g., To unlock the Galaxy Nexus, the user must slide her finger across the touch screen, maintaining continuous contact while interacting with the unlock image.
unlocking the hand held electronic device if the moving the unlock image on the touch sensitive display results in movement of the unlock image from the first predefined location to a predefined unlock region on the touch sensitive display.
e.g., Once the user completes sliding the unlock image from the starting point to the ending point on the touch screen, the Galaxy Nexus is unlocked.
(To prove infringement, need to show each and every element of a claim.)

22. Patent Infringement Most of the time: Sometimes: 2 Scenario:
Company A thinks Company’s B’s product infringes, sues B
B has legal counsel perform due diligence, counsel says “You’ll probably lose.”
B agrees to settle with A and either
Stop producing the infringing product
License A’s patent in order to continue infringing
Sometimes:
Same as above, but B decides to go to court to defend their product

23. (Direct) Patent Infringement – Options3
A sues B. B decides to take the case to trial. What are B’s options?

24. Patent Infringement – Defense: Patent Invalidity4
Argue for patent invalidity:
Perform prior art search to find prior art to invalidate the patent claims
Can show that A shouldn’t have gotten patent in the first place
Use claim construction to determine the breadth of the claims
Argue that claims are too broad, invalid
Demonstrate inequitable conduct on A’s behalf by providing evidence for clear intent to deceive the Patent Office
Show that A’s patent has expired

25. Patent Infringement – Defense: Non-infringing Use5
Methods of demonstrating non-infringing use:
Perform an infringement analysis comparing A’s patent claims to B’s product features
If not every element of one of A’s patent’s claims found in B’s product, then not infringing
Prove that B already had a license for A’s patent
Perhaps B already licensing A’s technology from C, in which case no infringement

26. Patent Infringement – Uncommon Defenses6
Prior user defense
Applies only to business method patents
If the defendant can prove use of the patented process at least one year before its application was filed, not infringing
Must be an “innocent infringer” i.e., did not know of the patent
Laches
Plaintiff is not allowed to assert patent rights if it can be shown they delayed enforcement to increase potential damages from defendant

27. Patent Infringement – Basics7
What does it mean to infringe a patent?
Manufacture, import, sell, or offer to sell patented technology
Courts’ test for infringement has two steps:
Analyze the claims to construe their meaning (a.k.a. “claim construction”)
Attempt to apply the claims to the accused infringing product (a.k.a. seeing if the claims “read on” the product’s features)

28. Patent Infringement – Doctrine of Equivalents8
Doctrine of Equivalents (DoE) – a product may still infringe a patent without directly infringing its claims if it
performs substantially the same function
in substantially the same way
to yield substantially the same result

29. Patent Infringement – Doctrine of Equivalents (cont.)9
Purpose of DoE is to prevent potential infringers from making insignificant changes to a patented product in order to circumvent the claims
There are exceptions to DoE, which include
Reverse Doctrine of Equivalents
Essentially, even if a product directly infringes on a patent’s claims, if it does so in a substantially different way to achieve a substantially different result, then it doesn’t infringe
Example: you invent a method of curing cancer using Edison’s light bulb  would not infringe
This defense is very rare

30. Patent Infringement – Slide-to-Unlock Hypothetical10
Assume Apple sued Samsung for infringing the slide-to-unlock patent with its Galaxy Tab.
First, the court would construe the claim language in a Markman hearing to determine the meaning of key terms
Second, the court would use a claim chart to analyze the degree to which the slide-to-unlock patent’s claim read on the Galaxy Tab’s unlock system

31. Slide-to-unlock patent claim 1
Samsung Galaxy Tab
A method of unlocking a hand held electronic device device including a touch sensitive display the method comprising:
(Each of these rows would be filled with Galaxy Tab features that read upon the claim elements in the opposite column)
e.g., The Galaxy Tab has a touch screen that detects contact and which displays unlock images.
detecting a contact with the touch sensitive display at a first predefined location corresponding to an unlock image;
The Galaxy Tab has a touch screen that detects contact. Detects contact at the beginning of the unlock inage.
continuously moving the unlock image on the touch sensitive display in accordance with movement of the contact while continuous contact with the touch screen is maintained wherein the unlock image is a graphical interactive user interface object with which a user interacts in order to unlock the device; and
e.g., To unlock the Galaxy Tab, the user must slide her finger across the touch screen, maintaining continuous contact while interacting with the unlock image.
unlocking the hand held electronic device if the moving the unlock image on the touch sensitive display results in movement of the unlock image from the first predefined location to a predefined unlock region on the touch sensitive display.
e.g., Once the user completes sliding the unlock image from the starting point to the ending point on the touch screen, the Galaxy Tab is unlocked.
(To prove infringement, need to show each and every element of a claim.)

32. Patent Infringement – Slide-to-Unlock Hypothetical (cont.)12
The claim chart must clearly indicate that the Galaxy Tab infringes Apple’s patent
What can Samsung do to defend itself?

33. Slide-to-Unlock Patent–Prior Art33
Prior art listed as other patents under “References Cited”
However, other undiscovered or undisclosed prior art is often revealed in court
Example: if Apple sued for slide-to-unlock infringement in the U.S., defendant (ie, Samsung) might cite Neonode N1m (early smartphone released in 2005) as prior art in an attempt to invalidate patent

34. Slide-to-Unlock Patent – Prior Art (cont.)34
Slide-to-unlock function four minutes in

35. Patent Infringement – Hypothetical Samsung Defense13
Samsung could:
Try to invalidate the patent with prior art, such as the Neonode N1m’s unlocking system
Argue that the patent’s claims are too broad
Look for evidence of inequitable conduct on Apple’s behalf while filing for the slide-to-unlock patent
Argue that the Galaxy Tab doesn’t include every element of the claims
What do you think would be the result of this case?