Saturday, May 17, 2014

Getting the Most Value From Your Patent Claims

Getting the Most Value From Your Patent Claims

By: Heather J. DiPietrantonio and Edmund J. Walsh

Intellectual Property & Technology Law Journal
Preparing patents is both a science and an art. The science is often easy to recognize, if not always easy to understand. The art of properly expressing that science in the words of a patent claim is harder to evaluate and is more often overlooked, yet is crucial to the value of the patent. Working with an experienced patent attorney can make all the difference in helping you avoid the pitfalls of patent claim drafting while getting you the most protection, both now and in the future.
The Role of Patent Claims
Patent claims define the scope of patent protection. Whether a claim covers a product accused of infringement frequently determines whether a patent holder will be rewarded or left with nothing. For example, in one 2008 case from the U.S. Court of Appeals for the Federal Circuit (Federal Circuit), a dispute over the meaning of terms in the claims wiped out a $115 million judgment in favor of the patent holder. At issue were two phrases in the claims, totaling less than 10 words – truly million dollar words.
Painting a picture in words of what a patent is to cover is an essential contribution that should be made by a patent practitioner. The claims should, of course, characterize what is inventive, but they must do so in a way that distinguishes over the prior art while still covering activities of future infringers who are trying to work around the patent. There is no formula or model to copy in writing a patent claim. If an invention must be unique (“novel”) to be patentable, then it stands to reason its patent claims must be unique as well. Accordingly, it falls to the patent drafter to visualize the invention and craft the appropriate words.
Poorly Written Claims Can Be Hazardous to a Patent’s Health
A good patent attorney contributes to the value of a patent by identifying features that characterize the invention, as it will be put into practice now and in the future when the patent might be enforced. This task, while on its face seems straight forward, often proves to be quite challenging. 
Of course, some part of a valuable claim is simply avoiding errors by claiming what the invention is not. Claims drafted improperly can cost a client dearly, as was the case in the 2004 Federal Circuit case, Chef America, Inc. v. Lamb-Weston, Inc. Chef America, Inc. accused Lamb-Weston, Inc. of infringing a patent that covered a process for making dough. One of the patent claims required, “heating the resulting batter-coated dough to a temperature in the range of 400 degrees Fahrenheit to 850 degrees Fahrenheit.” Though heating dough to such a temperature would turn it to charcoal, and though Chef America, Inc. insisted that the language meant that the oven (not the dough) was to be heated to such a temperature, the Federal Circuit ruled that Chef America was stuck with what the claim literally recites.
As any patent attorney worth his/her salt will tell you, don’t hang your hat on expecting people to know what you mean. Leave nothing open to claim interpretation – say what you literally mean. If you mean that an oven is to be heated to a temperature in the range of 400 degrees Fahrenheit to 800 degrees Fahrenheit, and then the dough is to be heated in that oven, you had better spell that out in the claims.
Having said that, there is often more to an artful claim than simply being precise. In fact, there is a risk in being too literal. The eye is often drawn to what is tangible – what the inventor has implemented. It can be difficult to extract from the specific tangible examples of an invention as built or tested those characteristics of the invention that could apply in the abstract, regardless of how the invention can be implemented. 
An example from a 1997 Federal Circuit case (Sage Products, Inc. v. Devon Industries, Inc.) will illustrate this point. The case involved a patent to a disposal container for hypodermic needles that prevented a user from inadvertently contacting what is inside. The container, as implemented by the inventors, had a slot with constrictions above and below the slot. Unfortunately for the inventor, the patent claims to such a container claimed exactly that. When an accuser built a similar container, with constrictions that performed the same functions in other positions, the claims did not cover the product and the patent owner lost the benefit of patent protection.
Not surprisingly, more complex examples of the need for a patent drafter who can see the essential features of the invention arise from more complex technologies. Some technologies may provide a solution to an immediate problem, but the problem may evolve over time, demanding the solution evolve as well. This is particularly relevant in the field of biologics, where much of the technology—such as vaccines—must meet the demands of ever evolving microorganisms. 
A vaccine to a specific microorganism may be effective now, but by the time a patent protecting the vaccine is granted, another strain of the microorganism will likely have developed, rendering the specific vaccine ineffective or much less effective and, consequently, less valuable. A patent attorney, together with the inventor, must account for this unpredictability by crafting claims that capture the characteristics of the vaccine that will remain even as it evolves. 
Avoiding Claim Drafting Pitfalls
Despite these challenges, there are important things that skilled patent attorneys and agents do to ensure that their clients receive the scope of protection to which they are entitled, now and several years from now. 
Think big and think creatively. Inventors often take their inventions at face value, describing each element in careful detail. Given the amount of time and dedication that goes into perfecting an invention, who could blame them? It may have taken months or years of development to figure out that the optimal size of a typical beerbrella (that’s right—U.S. Patent No. 6,637,447) is 5 to 7 inches, but clearly that size is going to depend on the size of your beer bottle. When writing claims, a patent prosecutor and an inventor should work together to see beyond the perfect prototype to abstract any variation on the elements that may permit a competitor to evade granted patent protection later on – such as by making a 9 inch beerbrella.
Think long term. One of the jobs of a patent prosecutor is to tease out core ideas that will persist over time and in different implementations of an invention. While technology is constantly changing, there are frequently overarching concepts that persist. To avoid narrowing the scope of claims with transient limitations, a good patent prosecutor will avoid terms that may only be relevant at the time a patent is written but may change over the lifetime of the patent. While a “leisure suit” of bell bottoms and pastels may have been popular at some point in time, claims to a “suit,” or perhaps more generally just “clothes,” would still describe today’s business suits with straight legs and dark grey color and would give protection even as fashion changes. 
Likewise, vacuum tubes gave way to semiconductor transistors, which may some day give way to biological transistors. Yet, even for inventions initially implemented with vacuum tubes, there is likely a core concept of a switching element or control circuit that persists, regardless of how the technology changes. Good claims will not limit the next high tech design feature to a particular era. Technology—like fashion—can be fleeting, especially over a period of 20 years. 
Use the right words. As Mark Twain said, “The difference between the right word and the almost right word is the difference between lightning and a lightning bug.”  A good (and valuable) claim elegantly balances details of an invention – not too many, not too few. As a rule of thumb, if a particular word in a claim is not necessary to describe the invention in its broadest sense, pitch it. Remember that to infringe a patent, a product must include every element in at least one claim. If a particular element is recited in a claim, but not necessary, a would-be infringer turns into a gainful entrepreneur by simply leaving out that element of the product, thereby avoiding the litigation song and dance down the road. On the other hand, if an element which distinguishes the invention over the prior art is left out of the claim, there no longer is an “invention” to patent.
It’s also good to keep in mind that adjectives may cause ambiguity problems during both prosecution and litigation, so be wary of them. Some patent prosecutors advise avoiding relative terms (e.g., large, small, many, few) and absolute positions (e.g., above, below, right, left). You will likely find yourself arguing with someone at some point about how big is big and whether that widget necessarily resides to the right of that gadget.
Say what you mean. Everything a patent prosecutor says should lead to the intended claim interpretation. A substantial part of patent litigation is determining the meaning of the claims, and this often daunting task is left primarily to a court. To properly construe a patent claim, the court may look to terms as used in the art, but may also look to the specification and the history of prosecution of the patent before the U.S. Patent & Trademark Office (USPTO) to glean what the claim is intended to cover. Even seemingly simple terms can lead the troops to battle, as was the situation involving the claim term “baffles” in the milestone Phillips v. AWH Corp. case, where the Federal Circuit ultimately relied on the dictionary definition of the term. Knowing that courts may ultimately look to the specification and prosecution history to interpret the claims provides many opportunities for a patent prosecutor to undo – or bolster – an insightful choice of words in the claims.
Know the landscape. While avoiding needless adjectives and actually saying what you mean are important first steps, that alone is often not enough to write a good claim. Understanding the patent owner’s business objectives lends a more complete understanding of the invention itself and is important to the process of abstracting the overarching concepts that make a good claim. When drafting a patent application, the attorney should first understand the commercial problem the invention solves. A good patent attorney can identify features that characterize commercial forms of the invention as well as features that distinguish over the prior art. It’s quite a walk along that tightrope between the two. 
Sometimes, meeting this need means deemphasizing the most technologically interesting portions of the invention. For example, it may be advantageous to characterize an invention based on a unique combination of inputs and outputs that must exist in any implementation of the invention rather than as a computational algorithm that occurs deep within the system. 
Know your target. Equally important is knowing the target of the patent. Who are the competitors who may infringe the patent? Who are potential licensees or business partners that will need to be persuaded of the value of the patent? Whomever the target, claims should be focused on that target. If a patent owner wants to prevent a particular competitor from developing the same or similar product, but it is difficult to broadly characterize inventive aspects of the product, claims might be focused on methods of making the product. If a patent owner wants to prevent a competitor from using the product, the claims might cover methods of using the product.  All of these questions are ones an experienced patent attorney can help you answer and resolve when it comes to drafting the claims.
An otherwise beautiful picture might be marred if the target is out of focus. Particular problems can arise when claims mix elements or concepts in an imprecise way. Problems can arise if the claims are not focused on a product, as used or sold solely by that target, or a method performed solely by that target. A method claim, for example, requires that all of the steps be performed by or under the control of the target. This fact has tripped up more than one potential infringement suit.
Know who is performing the steps. Of course, there is no case of infringement (no one to sue) unless there exists an agency relationship or other contractual obligation to perform the steps. While seemingly straightforward, this rule is frequently violated with computer technologies where claims may recite functions that are implemented in a computer operated by one company networked to a computer operated by another company – though similar problems can arise for other technologies.  
In the 2010 Federal Circuit case Akamai Techs., Inc. v. Limelight Networks, Inc., the claims were to a method of storing content. Limelight (Akamai’s direct competitor) was accused of benefitting by using exactly the same method. However, Limelight avoided liability because it did not attach tags to the information, which was a step of the claimed method. The Federal Circuit concluded that Limelight was not an appropriate target of an infringement suit even though Limelight’s customers did attach tags, which allegedly allowed Limelight to perform the rest of the steps of the claimed method.
Similar problems can arise for other claim formats. In a Federal Circuit case decided this past January (Centillion v. Quest), the claims were drafted to cover a system. Predominately, the claims recited elements of the system that were maintained by the service provider who was the target of the infringement suit. Unfortunately for the patent holder, the claims also recited a user’s computer. Because the service provider did not control that user’s computer, the service provider could not be the target of the suit for infringement. 
In this case, it is only end users who brought together all elements of the claim, making them the appropriate target of an infringement suit. However, there are many reasons that having claims that target individual users can substantially diminish the value of a patent. A remedy may only be available against parties scattered around the country or who are also customers of the patent holder. 
Other Ways to Deliver Value
Of course, these are just a few of the claim drafting pitfalls a good patent attorney will be constantly working to avoid. Choices for what to include in a claim can create questions about the validity of a patent that can be equally devastating to efforts to enforce a patent. The claims, of course, must avoid the prior art. In addition, the claims must avoid both apparent and latent ambiguities. For example, defining an inventive structure based on how it will be used can lead to trouble if the claim is drafted in such a way that it is ambiguous as to whether the claim is infringed when the structure is created or when it is used. Such was the holding in In re Katz Interactive Call Processing Patent Litigation, a Federal Circuit decision handed down in February of 2011. 
While the claim is the name of the game, so to speak, there are many other things that a good patent prosecutor must do to deliver a valuable patent at the end of the day. Each element of the claim, for example, must be supported in the patent specification. The specification must describe how to make and use the invention as it is claimed. While it is important to provide a description of each element, and perhaps several specific examples, patent prosecutors should, again, think expansively – looking ahead to what may need to be added to the claims during prosecution. 
As just one example, a good patent drafter should establish a hierarchy of words when writing the specification, with some referring to broad concepts and others referring to more narrow implementations. For example, one might describe the beerbrella mentioned above as a broader apparatus for shading a beverage, having a specific example of an umbrella for shading a beer bottle. In this way, the patent attorney will have a palette of characteristics of the invention from which to choose.   Such a palette may be essential to crafting a valuable claim as the patent attorney negotiates with the USPTO to define the scope of the claims that broadly cover the invention, while distinguishing the prior art.
Keep in mind, a valuable patent is one that protects an inventor’s creation—possibly years after the patent is drafted. A good patent drafter will bring together the art and the science to do just that. The goal, of course, is to have a patent that is more like a fine painting than a velvet Elvis. By crafting claims, and a supporting specification, the value of the patent should appreciate along with the technology the patent is intended to protect.

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