AIPLA Practical Patent Prosecution
Basic Training for New Lawyers
Claims Drafting Workshop: Electrical,
Computer, and Software Systems
Rick A. Toering | [email protected]| 703.790.7915
Thursday, August 26, 2010 | Alexandria, VA
Topics Covered
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Patentable Subject Matter
Forms of Claims
Drafting Considerations
Exercises
2
Patentable Subject Matter
• 35 U.S.C. § 101. - Inventions patentable:
– Whoever invents or discovers any new and useful
process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof,
may obtain a patent therefor . . .
– “[S]tatutory subject . . . includes[s] anything under the
sun that is made by man.” Diamond v. Chakrabarty,
447 U.S. 303, 309 (1980).
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Patentable Subject Matter
• A machine is “a concrete thing, consisting of parts or of
certain devices and combinations of devices.” Burr v.
Duryee, 68 U.S. (1 Wall.) 531, 570 (1863).
• A manufacture is “the production of articles for use from
raw or prepared materials by giving to these materials
new forms, qualities, properties or combinations,
whether by hand labor or by machinery.” Diamond v.
Chakrabarty, 447 U.S. 303, 308 (1980).
• A claim that requires one or more acts to be performed
defines a process. However, not all processes are
statutory under 35 U.S.C. 101. In re Schrader, 22 F.3d
290, 296 (Fed. Cir. 1994).
4
Patentable Subject Matter
In re Bilski
A method for managing the consumption risk costs of a commodity sold
by a commodity provider at a fixed price comprising the steps of:
(a) initiating a series of transactions between said commodity
provider and consumers of said commodity wherein said consumers
purchase said commodity at a fixed rate based upon historical
averages, said fixed rate corresponding to a risk position of said
consumer;
(b) identifying market participants for said commodity having a
counter-risk position to said consumers; and
(c) initiating a series of transactions between said commodity
provider and said market participants at a second fixed rate such
that said series of market participant transactions balances the risk
position of said series of consumer transactions.
5
Patentable Subject Matter
In re Bilski
Federal Circuit Created the So-Called “MOT Test” or
“Machine or Transformation Test”
In order for a process to be statutory subject matter,
the process must:
1) be tied to a particular machine or apparatus, or
2) transform a particular article into a different state
or thing
In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en banc)
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Patentable Subject Matter
In re Bilski
Supreme Court Rejected the MOT Test as the
Sole Test for Determining Statutory Subject
Matter
Instead, the Supreme Court Held that the Bilski
Claims were Directed Toward an Abstract Idea
Bilski v. Kappos, No. 08-964, 561 U.S. ___ (2010)
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Patentable Subject Matter
In re Bilski
Supreme Court Declined to Decide Whether
“Business Method Patents” are Statutory Subject
Matter
Let the Federal Circuit Define the Scope of
Business Methods that Comprise “Patent
Eligible” Subject Matter
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USPTO’s Interim Guidelines
PTO has published interim guidelines for determining
subject matter eligibility.
Guidelines presumptively adopt the MOT test, unless
the claims are clearly directed toward an excluded
category (abstract idea, law of nature, mathematical
algorithm)
See Interim Guidelines, Federal Register, vol. 75, no.
143, July 27, 2010
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Bilski Claim
1. A method <tied to a particular machine> or <for
transforming an article into a different state or
thing> comprising:
<gerund 1…>;
<gerund 2…>;
<gerund 3…>;
<gerund 4…>; and
<gerund 5…>
{whereby the <article is transformed into a
different state or thing>}.
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Apparatus Claim
1. An apparatus for <transforming an article>
comprising:
<circuit/component/module 1 that…>;
<circuit/component/module 2 that…>;
<circuit/component/module 3 that…>;
<circuit/component/module 4 that…>; and
<circuit/component/module 5 that…>,
{whereby the <article is transformed>}.
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Apparatus Claim - Example
1. A cell phone comprising:
a receiver that receives an incoming signal;
a demodulator that generates a demodulated signal
from the incoming signal;
a voice decoder that generates an audio signal from the
demodulated signal; and
a speaker that produces an audible signal from the
audio signal.
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Method Claim
1. A method for <transforming an article> comprising {the
steps of}:
<gerund 1…>;
<gerund 2…>;
<gerund 3…>;
<gerund 4…>; and
<gerund 5…>,
{whereby the <article is transformed >}.
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Method Claim - Example
1. A method for wireless communication
comprising:
receiving an incoming signal;
demodulating the incoming signal to generate a
demodulated signal;
decoding the demodulated signal to produce an audio
signal; and
generating an audible signal from the audio signal.
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Computer Program Products
• Unlike method claims, which require the steps recited in
the claim to actually be performed for direct infringement,
computer program product claims read on a computer
program stored in a tangible medium (e.g., floppy disks,
compact discs, hard drives, etc.).
• A party selling or distributing products on, for example, a
CD-ROM disc would directly infringe such a claim giving
the patentee a simpler case for proving infringement and
a concrete target for injunctive relief.
• Derived from In re Beauregard, 53 F.3d 1583 (Fed. Cir.
1995).
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Computer Program Product
Form 1
1. A computer program product for enabling a computer to
<transform an article> comprising:
software instructions that enable the computer to perform
predetermined operations; and
a tangible computer readable storage medium bearing the software
instructions;
the predetermined operations including:
<gerund 1…>,
<gerund 2…>,
<gerund 3…>,
<gerund 4…>, and
<gerund 5…>,
wherein {or whereby} the computer <transforms the article>.
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Computer Program Product
Form 2
1. A computer program product for enabling a computer to
<transform an article> comprising:
computer readable program code means for causing a computer to <verb
form of gerund 1…>
computer readable program code means for causing a computer to <verb
form of gerund 2…>;
computer readable program code means for causing a computer to <verb
form of gerund 3…>
computer readable program code means for causing a computer to <verb
form of gerund 4…>; and
computer readable program code means for causing a computer to <verb
form of gerund 5…>;
wherein {or whereby} the computer <transforms the article>.
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Computer System Claim
1.
A computer system adapted to <transform an article>
comprising:
a processor, and
a tangible memory storage including software instructions that cause
the computer system to perform:
<gerund 1…>,
<gerund 2…>,
<gerund 3…>,
<gerund 4…>, and
<gerund 5…>,
wherein {or whereby} the computer <transforms the article>.
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Drafting Considerations
• What is the invention?
• What is the prior art?
• Who infringes the claim?
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What is the Invention?
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Determine Key Innovative Element(s)
Determine Alternative Implementation(s)
Determine Commercial Implementation(s)
Determine Why Invention is Important
• Draft Claims with Varying Degrees of
Scope (Broad, Medium, Narrow)
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What is the Prior Art?
• Gather Prior Art Search Results (if any)
• Ascertain Inventor’s Knowledge of Art
• Ascertain Client’s Knowledge of Art
• Draft Claims to Exclude Known Prior Art
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Exercise #1 – The Problem
• Inventor has two TVs in order to
simultaneously watch two shows
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Exercise #1 – Invention
• Superimpose one image on another to
view both on one television.
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Exercise #1 – Implementation
Display
Switch
A/D
Vpip
Vpip
Video Vpip
D/A
Memory
Vpip
VS
Vs
CPU
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Exercise #1 – Invention
• Not aware of any alternative embodiments.
• All elements are “critical” except A/D and D/A
converters not needed if PIP image is digital.
• Inventor thinks only commercial use is for
televisions.
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Exercise #1 – Draft Claim
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Exercise #1 – Sample Claim 1
A system for simultaneously displaying a first image and a
second image comprising:
a memory device that stores a first image signal;
a switch that receives said first image signal from said
memory device and that receives a second image signal,
said switch generating and outputting a combined image
signal that includes at least a portion of said first image
signal and said second image signal;
a display device that receives said combined image
signal from said switch and that displays a combined
image; and
a controller that controls the operation of said switch to
generate said combined image signal.
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Exercise #1 – Critique of Claim 1
• Use of memory may be too narrow.
• Switch can be replaced with alternatives
such as storing both images in memory.
• Since display is required, semiconductor
manufacturer is not a direct infringer.
• Controller may not be necessary.
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Exercise #1 – Draft Broader Claim
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Exercise #1 – Sample Claim 2
2. A method for generating a combined image
signal from a first image signal and a second
image signal comprising:
receiving the first image signal from a first source;
receiving the second image signal from a second
source; and
generating a combined image signal that includes
at least portions of the first image signal and
the second image signal.
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Exercise #1 – Cited Reference
Switch
VS1
VS1
VS1
VS1
VS2
VS3
VS4
VS1
Control
Unit
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Display
VS1
VS2
VS3
VS4
Exercise #1 – Amended Claim 1
(Amended) A system for simultaneously displaying a first image and a
second image comprising:
a memory device that stores a first image signal;
a switch that receives said first image signal from said memory
device and that receives a second image signal, said switch
generating and outputting a combined image signal that includes at
least a portion of said first image signal and said second image
signal;
a display device that receives said combined image signal from
said switch and displaying a combined image, wherein in said
combined image, the second image at least partially overlaps the
first image; and
a controller that controls the operation of said switch to
generate said combined image signal.
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Who Infringes the Claim?
• Draft Claims that Can Be Infringed
• Direct Claims Toward Infringers
• Confine Infringement to an Entity
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Draft Claims Toward Infringers
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Deep Pockets
Choke Points/Toll Gates
Likely Competitive Activity
Consumables
Recurring Activities (e.g., Sales, Use)
Commercial Units
Chain of Commerce
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Confine Infringement to an Entity
• Direct vs. Indirect Infringement
• Transmit/Receiver Applications
– System Claims
– Transmit Side Claims
– Receive Side Claims
• Client/Server Applications
– System Claims
– Client Side Claims
– Server Side Claims
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Example
1. A method for purchasing widgets comprising:
providing a list including a plurality of widgets available
for purchase;
selecting one of said plurality of widgets to purchase;
entering a quantity of said selected one of said plurality
of widgets and billing information;
sending indicia identifying said selected one of said
plurality of widgets, said quantity, and said billing
information;
receiving said indicia, said quantity and said billing
information;
processing said billing information; and
delivering said quantity of said selected one of said
widgets.
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Example – Who Infringes?
1. A method for purchasing widgets comprising:
providing a list including a plurality of widgets available for
purchase; SERVER FUNCTION? CLIENT FUNCTION?
selecting one of said plurality of widgets to purchase; USER
FUNCTION
entering a quantity of said selected one of said plurality of widgets
and billing information; USER FUNCTION
sending indicia identifying said selected one of said plurality of
widgets, said quantity, and said billing information; CLIENT
FUNCTION
receiving said indicia, said quantity and said billing information;
processing said billing information; and SERVER FUNCTION
delivering said quantity of said selected one of said widgets. UPS?
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Example – Client Side
1. A method for purchasing widgets in a client-server
environment comprising:
receiving a list including a plurality of widgets available for
purchase from a server;
presenting said list to a user;
in response to the user selecting one of said plurality of widgets for
purchase, requesting a quantity of said selected one of said
plurality of widgets to purchase and billing information;
receiving said quantity and said billing information from the user;
and
sending indicia identifying said selected one of said plurality of
widgets, said quantity, and said billing information to the server.
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Example – Server Side
1. A method for selling widgets in a client-server
environment comprising:
sending/providing a list including a plurality of widgets available for
purchase to a client;
in response to a user selecting one of said plurality of widgets for
purchase at the client, receiving indicia identifying said selected
one of said plurality of widgets, a quantity of said selected one
of said plurality of widgets to purchase, and billing information
associated with the user from the client;
processing said billing information; and
causing said quantity of said selected one of said widgets to be
delivered to the user.
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Examples – Other “Infringers”
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System Claims
User Interface
Website hosts and ISPs
Wireless network providers
Others?
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Exercise #2
• Draft an independent claim directed
toward a third-party virtual store front
disposed between the client and the
server.
• Draft dependent claims where:
a) third-party handles billing
b) seller handles billing
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Exercise #2 – Work Space
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Exercise #2 – Sample Claim
1. A method for facilitating a purchase of widgets using an
intermediary disposed between a client and a server comprising:
receiving a list including a plurality of widgets offered for sale from the
server associated with at least one seller of said plurality of widgets;
providing said list to the client associated with a buyer of at least one of
said plurality of widgets;
in response to the buyer selecting one of said plurality of widgets to
purchase, receiving, from the client, indicia identifying said selected
one of said plurality of widgets, a quantity of said selected one of said
plurality of widgets to purchase, and billing information associated with
the buyer; and
providing, to the server associated with the seller of said selected one of
said plurality of widgets, indicia identifying said selected one of said
plurality of widgets, said quantity of said selected one of said plurality of
widgets to purchase, and at least a portion of said billing information
associated with the buyer.
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Exercise #2 – Sample Dep. Claims
2. The method of claim 1, further comprising billing, by the
intermediary, the buyer for said quantity of said selected
one of said plurality of widgets using said billing
information.
3. The method of claim 1, wherein said providing further
comprises providing billing information associated with
the buyer to the server so that the seller can bill the
buyer for said quantity of said selected one of said
plurality of widgets.
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Exercise #3 – The Problem
• Processing Character Strings in
Computers
• String_X = “John Smith”
• Array_Y = “Kate Smith”
“Bob Jones”
“John Jones”
“John Smith”
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Exercise #3 – The Problem
• Conventionally, Character Strings are Processed on a
Character-by-Character Basis
• String_X = [“J”, “o”, “h”, “n”, “ ”, “S”, “m”, “i”, “t”, “h”]
• Array_Y = [“K”, “a”, “t”, “e”, “ ”, “S”, “m”, “i”, “t”, “h”]
[“B”, “o”, “b”, “ ”, “J”, “o”, “n”, “e”, “s”]
[“J”, “o”, “h”, “n”, “ ”, “J”, “o”, “n”, “e”, “s”]
[“J”, “o”, “h”, “n”, “ ”, “S”, “m”, “i”, “t”, “h”]
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Exercise #3 – The Invention
Convert the string (comprised of a plurality of characters)
into a single number. This can be accomplished by
selecting a number system having a radix at least as
large as the number of different possible characters in
the string. Each of the possible characters can be
assigned to a symbol in the number system. Then, a
single number can be expressed based on the value of
the character and its position in the original string.
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Exercise #3 – The Invention
For Example:
A
0
B
1
C
2
D
3
E
4
F
5
G
6
H
7
I
8
J K L M
9 10 11 12
N O P Q R S T U V W X Y Z
12 14 15 16 17 18 19 20 21 22 23 24 25
First_Value = J*263 + O*262 + H*261 + N*260
Last_Value = S*264 + M*263 + I*262 + T*261 + H*260
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Exercise #3 – The Invention
For Example (cont’d):
First_Value = 9*263 + 14*262 + 7*261 + 12*260
Last_Value = 18*264 + 12*263 + 8*262 + 19*261 + 7*260
First_Value = 167842 (base 10) = JOHN (base 26)
Last_Value = 8442389 (base 10) = SMITH (base 26)
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Exercise #3 – Discussion
• What is the Invention?
• Is this Patent Eligible Subject Matter?
• What are Possible Alternate Embodiments?
• What are Possible Applications?
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Exercise #3 – Considerations
• Merely an Algorithm?
• Is There a Transformation?
• Can the Method be Performed on Paper?
• Mental Process vs. Computer Process
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Rick A. Toering
Partner/IP
[email protected] | 703.790.7915
Tysons Corner, Virginia