AIPLA Practical Patent Prosecution Basic Training for New Lawyers Claims Drafting Workshop: Electrical, Computer, and Software Systems Rick A. Toering.

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

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Topics Covered

• Patentable Subject Matter

• Forms of Claims

• Drafting Considerations

• Exercises

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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).

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Patentable Subject MatterIn 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.

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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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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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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 ProductForm 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 ProductForm 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…>; andcomputer readable program code means for causing a computer to <verb

form of gerund 5…>;


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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…>,


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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?

• 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

A/DVideo

MemoryD/A

Display

Vpip

CPU

Vpip Vpip Vpip

Switch

VS

Vs

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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

VS1

VS1 VS1

VS1

VS4

VS1 VS2

VS4VS3

Display Switch

ControlUnit

VS3

VS2

VS1

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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

• 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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Example1. 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

FUNCTIONentering a quantity of said selected one of said plurality of widgets

and billing information; USER FUNCTIONsending 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”

• 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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• Processing Character Strings in Computers

• String_X = “John Smith”

• Array_Y = “Kate Smith”

“Bob Jones”

“John Jones”

“John Smith”

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• 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 InventionFor Example:

A B C D E F G H I J K L M 0 1 2 3 4 5 6 7 8 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

Rick A. ToeringPartner/IP

[email protected] | 703.790.7915

Tysons Corner, Virginia

AIPLA Practical Patent Prosecution Basic Training for New Lawyers Claims Drafting Workshop: Electrical, Computer, and Software Systems Rick A. Toering.

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