Nuts & Bolts of Patents

NUTS & BOLTS OF PATENTSIP -101 2016 SERIES

Premier date : February 22, 2016

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IP 101 – 2016

NUTS & BOLTS OF PATENTS

Premier Date: February 22, 2016

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meet the facultyPANELISTS

Eric Curtin Crawford MaunuDavid Donoghue Holland & KnightGary Sorden Klemchuk LLP

MODERATOR William C. Spence SpencePC


Practical and entertaining education for business owners and executives, accredited

investors, and their legal and financial advisors. For more information, visit

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about this webinar


Lonnie Johnson invented the super soaker, sought patent protection, and obtained millions in royalties for his invention. He could not have done so without the right to exclude others, which was granted under U.S. patent laws.

This webinar will: • Provide an overview of patent rights and eligibility;

and • Discuss basics of patent prosecution and patent

litigation. 6

about this series


The United States’ intellectual property (IP) laws have undergone fundamental changes over the past several years, but more changes may be on the way. Clearly, IP rights foster human ingenuity, innovation, and creativity. But some complain that IP rights also enable certain individual and companies to prosper financially more than they should. So, what exactly are IP rights? And how might they affect you or your company? Join some of the leading attorneys in the World, as they discuss—in plain English for the non-expert—the basics of U.S. IP laws.

As with all Financial Poise webinars, each episode in the series is designed to be viewed independently of the other episodes, and listeners will enhance their knowledge of this area whether they attend one, some, or all of the programs. 7

episodes in this series


EPISODE #1 IP- What Every Lawyer & Client Must Understand

1/28/2016

EPISODE #2 Nuts & Bolts of Patents 2/22/2016

EPISODE #3 Nuts & Bolts of Copyrights

3/17/2016

EPISODE #4 Nuts & Bolts of Trademarks 4/21/2016

EPISODE #5 Nuts & Bolts of Trade Secrets 5/26/2016Dates above are premier dates All webinars also available On Demand through West LegalEd Center and Vimeo

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Presentation Overview


What is a patent?• Patent eligibility; and• Limitations of patents.Patent Prosecution – The process of obtaining a patent from the USPTO. Patent Litigation – Enforcing patents against infringers.

What is a Patent?


A patent is a right granted by the U.S. government to an inventor for a limited time to exclude others from: • Making, using, offering to sell, or selling the

patented invention; or• Importing the patented invention into the United

States.Patents protect inventions and discoveries, including new and useful processes, machines, products, compositions, or manufactures. Types of patents include design, utility, and plant patents.

Patent Eligibility Requirements


For an invention to be patentable, the invention must fall within a category of patentable subject matter; must be useful, new, and non-obvious; and must contain an adequate disclosure of the invention. • Patentable subject matter • Usefulness or utility • New or novelty• Non-obviousness• Adequate disclosure

Patent Eligibility: Patentable Subject Matter


A patent must claim patentable subject matter, and the claims of the patent must fall within one of the following broad categories: • Process (e.g., methods of manufacturing a

product) • Machine (e.g., mechanical devices)• Manufacture (e.g., tools or ceramics)• Composition of Matter (e.g., chemical compounds

or mechanical mixtures)


Patent Eligibility: Patentable Subject Matter

Courts have identified the following limited exceptions to the categories of patentable subject matter:• Abstract ideas (e.g., hedging risk)• Laws of nature (e.g., gravity) • Natural phenomena (e.g., a naturally

occurring gene)

Patent Eligibility: Utility


The claimed invention must have “utility,” or in other words, the claimed invention must be “useful.” • Utility is a low threshold requirement. The

invention must have some real-world application and not have an immoral purpose.

Patent Eligibility: Novelty


The claimed invention must be “new.” • First to Invent vs. First to File (The U.S. Patent

system is now a “first to invent” system).• A single prior art reference (e.g., patents or

printed publications) may “anticipate” the claimed invention, thus making the invention not novel.

• There is a one year grace period to file a patent application after disclosure.

Patent Eligibility: Non-obviousness


The claimed invention must be “non-obvious.” • An invention may be obvious where all of

the limitations of the claimed invention are present in the prior art, but not in a single reference.

• There must be some motivation to combine the prior art references to achieve the claimed invention, and a reasonable expectation of success in doing so.

Patent Eligibility: Adequate Disclosure


A patent application through its specification must adequately disclose the claimed invention. This disclosure must meet the following separate requirements:• Written Description – The specification must sufficiently

describe the claimed invention. • Enablement – The specification must describe how to make

and use the invention. • Best Mode – The specification must state the best way

contemplated for carrying out the invention. • Definiteness – The specification’s claims must particularly point

out and distinctly claim the invention.

Patent Prosecution and Ownership


To obtain a patent on an invention, an inventor, patent agent, or patent attorney must file a patent application with the USPTO. The process of filing a patent application and negotiating the patent application with the USPTO is known as patent prosecution.

A patent application is made in an inventor’s name, and the inventor is presumed to initially own rights in the invention. An inventor may assign (or may be required to assign) the patent application or patent to another party (e.g., her/his employer).

Parts of A Patent


A patent application and issued patent typically comprise of:• Claims – The claims of a patent define the scope of the invention and the extent of

the protection conferred by the patent. A patent claim includes a preamble, transitional phrase, and limitations of the claim.

For example, a patent claiming an ordinary shovel may recite:

1. A shovel comprising: an elongated handle; and a shovel head; wherein said elongated handle is attached to said shovel head.

In the example above, the term “a shovel” is the preamble, and the term “comprising” is the transitional phrase. The phrases “an elongated handle,” “a shovel head,” and “wherein said elongated handle is attached to said shovel head” are each limitations or elements of the claim.

Parts of A Patent Cont.


A patent application and issued patent typically comprise of:• Specification – The disclosure that supports the claimed invention.

• The title of the invention. • An abstract that summarizes the disclosure. • Background on the prior art and the invention. • Brief summary of the invention. • Brief description of the drawings. • Drawings.• Detailed description of the invention. • Claims. N.B. The claims of the invention are considered part of the patent’s specification, but patent practitioners often refer to the “claims” and the “specification” as separate parts of the patent.

Limitations on Patent Protection


• Term – A patent typically lasts 20 years from the date of filing.

• Territory – A U.S. patent only give its owner the right to exclude others in the U.S.

• Exhaustion – Once a patented article is sold without restriction, the rights in the article are exhausted.

• Reasonable Repair – Although the owner of a patented article may not reconstruct the article, the owner may repair the article without consent of the patent owner.


Limitations on Patent Protection Cont. • Statute of Limitations (SOL) – There is no strict SOL, but a

patentee may not recover damages for infringement that occurred more than 6 years before filing suit. An unreasonable delay in bringing suit, laches, may also bar recovery of damages.

• Inequitable Conduct – Where a patent applicant misrepresents information to the USPTO during prosecution, the patent may be deemed unenforceable.

• Equitable Estoppel – Reasonable reliance that the patentee did not intend to enforce the patent against a party.

• Misuse – An unlawful extension of the patent beyond its lawful scope (e.g., demanding royalties after the expiration of the patent).

Patent Infringement


A party that practices an invention claimed in a patent without a license from the owner infringes the patent. 1. Direct Infringement

a. Literal Infringement - The infringing article contains each and every limitation of the patent claim.

b. Doctrine of Equivalents – If every element is not literally present, the differences between the elements and article must be insubstantial or interchangeable, according to a person of ordinary skill in the art.

Patent Infringement Cont.


2. Indirect Infringement: a. Contributory Infringement – A party must show the

infringer knew the combination of articles was patented and infringing, and that the articles had no substantial noninfringing use.

b. Induced Infringement – A party must show the alleged infringer knowingly induced infringement and possessed specific intent.

N.B. A party alleging indirect infringement must show direct infringement as well.



Claim Construction: • The interpretation of a patent’s claims is a matter of law. A court

construes the key words in a patent claim at a pre-trial hearing, known as a “Markman hearing.” The construction of key claim terms directly impacts whether an accused article infringes the asserted patent claim.

• Intrinsic evidence vs. Extrinsic evidence• Intrinsic evidence, including the claims, specification, and

prosecution history, serves as the principal source for construing the claim terms. Extrinsic evidence (e.g., dictionary definitions) may be considered. But, it must be considered in light of the intrinsic evidence and is less reliable than intrinsic evidence.



Remedies: • Preliminary Injunction • Permanent Injunction• Monetary Damages:

• Lost Profits – Requires a showing that “but for” the infringer’s acts, the patentee would have had greater sales, charged higher prices, or incurred lower expenses.

• Reasonable Royalty – A court engages in a hypothetical situation and determines the amount that a willing patent owner and willing licensee would negotiate for use of the patent. A patentee is entitled to at least a reasonable royalty for damages.

• Enhanced Damages – A court may increase patent damages up to three times for willful infringement.

More About The Faculty: D

WILLIAM [email protected]

William Spence assists individual and business clients to obtain their best possible outcome in contentious legal matters. He has extensive experience in litigation, arbitration, and mediation involving all areas of intellectual property law. A registered patent attorney, Mr. Spence serves clients by providing advocacy and advice in the areas of: patent infringement; trade secret misappropriation; unfair competition (including conspiracy, tortious interference, and related antitrust claims); breach of contract; post-grant patent proceedings (e.g., inter partes review) ; trademark infringement; and copyright infringement.

He has litigated claims in both state and federal courts throughout the United States. Additionally, Mr. Spence has extensive experience with patent monetization strategies and complex, international patent infringement litigation involving multiple parties and jurisdictions, most notably including Japan. He is a published author and frequent speaker on patent monetization and other intellectual property issues, and has been repeatedly recognized as an “Illinois Rising Star” and “Illinois Star,” in the area of intellectual property.

Mr. Spence is a graduate of the University of Notre Dame, where he obtained separate Bachelor of Science Degrees in Chemical Engineering and Biophysics (“Physics in Medicine”). As a student he received the distinction of Notre Dame Scholar and also earned the Monogram Award. Upon graduation from Notre Dame, Mr. Spence received his commission as a Second Lieutenant in the United States Air Force, Medical Service Corps. After completing his military service, he worked for several years in the chemical industry before pursuing his legal education at the University of Houston Law Center.

Prior to forming SpencePC, Mr. Spence spent twelve years practicing law with Kirkland & Ellis LLP in Chicago, IL and Tokyo, Japan. 27


ERIC [email protected]

Eric’s practice has included the preparation and prosecution of patent applications in the electronic, electromechanical, biomedical, chemical and optical technology areas, and further in the area of computer-implemented/software inventions. Eric also assists clients in the procurement of trademarks and copyrights, and with various aspects of trademark and copyright law including oppositions, cancellations, and license agreements. He maintains a robust practice in client counseling, including opinions of infringement/invalidity.Eric leads his firm’s legal education efforts, has authored multiple intellectual property articles, and serves as an expert on nationally-broadcast panels concerning patent, trademark and copyright matters. His recent article Functional Claiming Under U.S. Patent Law has been published by the International In-house Counsel Journal.

Technically, Eric has significant experience in various cross-disciplinary fields including those involving wireless communications technologies, semiconductors, medical/biological devices, thin-film transistors, solar cells, proteomics and nanotechnologies. He has worked extensively in the semiconductor design, physics and materials science fields, and in a variety of communications fields involving mobile electronics, video processing, and media content streaming.

Prior to entering the legal profession, Eric worked in engineering and research areas for the automotive and plastics industries. He is experienced in prototype modeling, failure analysis, and in the design, installation, and operation of electronic controls, robotics and communications systems.In addition to his legal and industry experience, Eric is involved with non-profit and community organizations, serving on the board of directors for two Minnesota-based non-profit organizations that promote youth athletics.

Eric has engineering and law degrees from the University of Wisconsin at Madison. He is licensed to practice law in several state and federal courts and is a registered patent attorney. 28

https://www.iicj.net/library/detail.asp?key=870

https://www.iicj.net/library/detail.asp?key=870



DAVID [email protected]

R. David Donoghue is a partner at Holland & Knight.

David Donoghue is a trial attorney and the deputy practice group leader of Holland & Knight's Intellectual Property Group, focusing his almost 15 years of experience upon intellectual property litigation and particularly upon patent disputes. Mr. Donoghue's most recent trial experience includes a jury verdict finding of willfulness, a full trebling of damages and a full award of attorney's fees in the Northern District of Illinois. Mr. Donoghue has also been chosen as lead trial counsel in RPXIS’s insurance program defending companies against non-practicing entities.

In addition to his focus defending retailers and their supply chains against non-practicing entities, Mr. Donoghue’s practice spans diverse technology areas, including internet technologies, cellular telephony, computer software, WiFi, pharmaceuticals, automotive technologies, electrical technologies, television production equipment, nutritional supplements and numerous medical devices.

Mr. Donoghue was previously with Delphi, the world's largest automotive supplier, where he was a founding member of Delphi's Technology Licensing and Litigation Group and handled substantial international intellectual property litigation and licensing matters.Intellectual Asset Management (IAM) Patent 1000 recommended Mr. Donoghue in 2014. The 2015 write-up states "David Donoghue is an excellent attorney who holds himself to the highest standards. More than any other attorney, he is personally concerned about his clients' business and provides pragmatic advice that renders decision making easy. Several years in-house have given him a keen commercial sense and he is an upfront communicator with leading expertise on retail industry affairs. The Holland & Knight supremo writes the well-received Chicago IP Litigation blog and is always up on the case law." Mr. Donoghue has served as an adjunct professor at the Loyola University Chicago School of Law, teaching legal research and writing and intellectual property courses. At the beginning of his legal career, Mr. Donoghue served as a law clerk to the Honorable Gordon J. Quist, federal district judge for the U.S. District Court for the Western District of Michigan.

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GARY [email protected]

Gary Sorden, Managing Principal at Klemchuk, LLP.

He primarily focuses on commercial and intellectual property litigation in the areas of software, electrical, mechanical, semiconductor, and chemical technologies. He has represented clients in federal and state matters before trial and appellate courts as well as alternative dispute resolution forums. His experience also includes representing clients in a wide variety of matters including real estate, commercial, oil and gas, business, environmental, securities actions, class actions, product liability, trademark, copyright, and patent disputes. Gary’s diverse litigation experience allows him to provide comprehensive representation in a wide-variety of litigation matters while also maintaining the business objectives of his clients.

Gary also counsels clients in obtaining and developing intellectual property including product and company branding strategies as well as the development of patents, trademarks, and copyrights. Intangible assets, such as intellectual property, are a key driver in the valuation of companies and as a result, he works closely with his clients to develop an intellectual property strategy that is appropriate and scalable for the needs of his clients.Gary earned his law degree from Texas Tech School ofLaw and holds a M.S. in Engineering Management from Southern Methodist University as well as a B.S. in Computer Science from the University of Texas – Pan American.

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Important Notes

• THE MATERIAL IN THIS PRESENTATION IS FOR GENERAL EDUCATIONAL PURPOSES ONLY.

• IT SHOULD NOT BE CONSIDERED LEGAL, INVESTMENT, FINANCIAL, OR ANY OTHER TYPE OF ADVICE ON WHICH YOU SHOULD RELY.

• YOU SHOULD CONSULT WITH AN APPROPRIATE PROFESSIONAL ADVISOR TO DETERMINE WHAT MAY BE BEST FOR YOUR INDIVIDUAL NEEDS.
