Case:
Tafas v. Doll, No. 2008-1352 (Fed. Cir. Mar. 20, 2009).
Ruling:
The USPTO’s Final Rules 75, 78, 114, and 265 are procedural rules that are within the scope of the USPTO’s rulemaking authority. Final Rule 78 conflicts with 35 U.S.C. § 120 and is thus invalid.
Affirm the district court’s grant of summary judgment that Final Rule 78 is invalid, vacate its grant of summary judgment with respect to Final Rules 75, 114, and 265, and remand for further proceedings consistent with this opinion.
Short Explanation of New Rules (note: quotation from the decision):
Final Rule 78 governs the availability of continuation and continuation-in-part applications. Under the rule, an applicant is entitled to file two continuation applications as a matter of right. 37 C.F.R. § 1.78(d)(1)(i). If an applicant wishes to pursue more than two continuation applications, he must file a petition “showing that the amendment, argument, or evidence sought to be entered could not have been submitted during the prosecution of the prior-filed application.” Id. § 1.78(d)(1)(vi).
Final Rule 114 provides for similar treatment of RCEs. Under the rule, an applicant is allowed one RCE as a matter of right. Id. § 1.114(f). For each additional RCE, the applicant must file a petition “showing that the amendment, argument, or evidence sought to be entered could not have been submitted prior to the close of prosecution in the application.” Id. § 1.114(g).
Final Rule 75 requires an applicant who submits either more than five independent claims or twenty-five total claims to provide the examiner with information in an examination support document (“ESD”). 37 C.F.R. § 1.75(b)(1).
The requirements for ESDs are set forth in Final Rule 265. To comply with Final Rule 265, an applicant must conduct a preexamination prior art search, provide a list of the most relevant references, identify which limitations are disclosed by each reference, explain how each independent claim is patentable over the references, and show where in the specification each limitation is disclosed in accordance with 35 U.S.C. § 112, 1.
Showing posts with label patent prosecution. Show all posts
Showing posts with label patent prosecution. Show all posts
Friday, March 20, 2009
Wednesday, February 11, 2009
Five Common Mistakes of Patent Prosecution from the Enforcement Perspective (Part 5)
Mistake #5: Lack of Communication with the Examiner
We observed that sometimes applicants do not proactively communicate with the examiner. Again, this is not really a mistake, but a less than ideal common practice.
Examples
• Applicant realizes that the Examiner appears to have misunderstood a complex aspect of the invention, and traverses in the response to the office action. The Examiner issues the final office action with the same misunderstanding. Applicant traverses again in another response.
Consequence
• Prolonged Examination.
• Potential Prosecution History Estoppel.
Case Study
In Hormone Research Foundation, Inc. v. Genentech, Inc., 904 F.2d 1558 (Fed. Cir. 1990), the Court held:
• Prosecution history estoppel can limit the coverage of an inventor’s claims.
• Official correspondence with the examiner may be used to limit the patentee’s claims.
• “Depending on nature of purpose of amendment, it may have limiting effect with inspector ranging from great to small to zero.”
Therefore, communicating with the Examiner proactively may reduce paper trail and avoid unnecessary delays. Based on our experience, the examiners are generally professional and cordial, and also want to move the prosecution forward.
Solution
• Proactively communicate with the examiner via telephone or in person interviews.
• Work with the examiner after an office action to expedite the prosecution and save costs by avoiding unnecessary delays and, after the final office action, pursuing the possibility of an Examiner’s Amendment.
(THE END)
We observed that sometimes applicants do not proactively communicate with the examiner. Again, this is not really a mistake, but a less than ideal common practice.
Examples
• Applicant realizes that the Examiner appears to have misunderstood a complex aspect of the invention, and traverses in the response to the office action. The Examiner issues the final office action with the same misunderstanding. Applicant traverses again in another response.
Consequence
• Prolonged Examination.
• Potential Prosecution History Estoppel.
Case Study
In Hormone Research Foundation, Inc. v. Genentech, Inc., 904 F.2d 1558 (Fed. Cir. 1990), the Court held:
• Prosecution history estoppel can limit the coverage of an inventor’s claims.
• Official correspondence with the examiner may be used to limit the patentee’s claims.
• “Depending on nature of purpose of amendment, it may have limiting effect with inspector ranging from great to small to zero.”
Therefore, communicating with the Examiner proactively may reduce paper trail and avoid unnecessary delays. Based on our experience, the examiners are generally professional and cordial, and also want to move the prosecution forward.
Solution
• Proactively communicate with the examiner via telephone or in person interviews.
• Work with the examiner after an office action to expedite the prosecution and save costs by avoiding unnecessary delays and, after the final office action, pursuing the possibility of an Examiner’s Amendment.
(THE END)
Tuesday, February 10, 2009
Five Common Mistakes of Patent Prosecution from the Enforcement Perspective (Part 4)
Mistake #4: IDS
The fourth typical mistake is that the applicant of one application fails to bring an office action and/or cited prior art in a co-pending application to the first Examiner.
Examples
• Applicant files App. A and App. B, both of which share a similar specification. Examiner A issues an office action in App. A, citing several prior art. Applicant fails to bring this office action (and its cited art) to Examiner B who examines App. B.
Consequence
• This may lead to inequitable conduct, which could render the patent unenforceable.
Case Study
In McKesson Info. Solutions, Inc. v. Bridge Med., Inc., 487 F.3d 897 (Fed. Cir. 2007), the Federal Circuit affirmed the district court’s finding of inequitable conduct due to the patent applicant’s nondisclosure of three items of information during prosecution in a setting where the applicant had co-pending applications, including one before the same examiner and the undisclosed items came from co-pending applications. Id. at 901, 925-26.
The Federal Circuit cautioned that “the MPEP at the time explained that a prosecuting attorney should not ‘assume that [a PTO examiner] retains details of every pending file in his mind when he is reviewing a particular application,’ MPEP § 2001.06(b) (5th ed. rev. 3, 1986).” Id. at 925.
The current MPEP retains the same language.
Solution
If the applicant has co-pending applications that share a similar specification, under McKesson and recent Federal Circuit cases, the applicant should always submit the IDSs to bring office actions and cited prior art from the co-pending applications to the examiner’s attention, even if the same examiner is examining all co-pending applications.
(TO BE CONTINUED)
The fourth typical mistake is that the applicant of one application fails to bring an office action and/or cited prior art in a co-pending application to the first Examiner.
Examples
• Applicant files App. A and App. B, both of which share a similar specification. Examiner A issues an office action in App. A, citing several prior art. Applicant fails to bring this office action (and its cited art) to Examiner B who examines App. B.
Consequence
• This may lead to inequitable conduct, which could render the patent unenforceable.
Case Study
In McKesson Info. Solutions, Inc. v. Bridge Med., Inc., 487 F.3d 897 (Fed. Cir. 2007), the Federal Circuit affirmed the district court’s finding of inequitable conduct due to the patent applicant’s nondisclosure of three items of information during prosecution in a setting where the applicant had co-pending applications, including one before the same examiner and the undisclosed items came from co-pending applications. Id. at 901, 925-26.
The Federal Circuit cautioned that “the MPEP at the time explained that a prosecuting attorney should not ‘assume that [a PTO examiner] retains details of every pending file in his mind when he is reviewing a particular application,’ MPEP § 2001.06(b) (5th ed. rev. 3, 1986).” Id. at 925.
The current MPEP retains the same language.
Solution
If the applicant has co-pending applications that share a similar specification, under McKesson and recent Federal Circuit cases, the applicant should always submit the IDSs to bring office actions and cited prior art from the co-pending applications to the examiner’s attention, even if the same examiner is examining all co-pending applications.
(TO BE CONTINUED)
Monday, February 9, 2009
Five Common Mistakes of Patent Prosecution from the Enforcement Perspective (Part 3)
Mistake #3: Potential Infringing Acts?
Well, this is not really a mistake. Too often, however, are claims of a patent application/family directed to one type of potential infringing acts only. The reasons could be that (1) the person who drafts the application does not think ahead and draft claims with an eye towards enforcement, (2) the person who drafts the application does not fully understand the technology roadmap in the market beyond the invention itself, or (3) both.
Examples
• Claims directed to a computer processor chip, but none directed to a computer or a network system using the chip.
Consequence
• Less flexibility in enforcement.
• In the example above, the patentee can only sue on the chip, but not a computer or a network system.
• Potential damages may be negatively affected.
Case Study
In Quanta Computer, Inc. v. LG Electronics, Inc., No. 06-937 (U.S. June 9, 2008), some of key facts and arguments are as follows:
• LGE has patents that are directed to computer chips and computers.
• LGE licensed its patents to Intel for Intel’s chips with the condition that the license does not cover combinations (e.g., computers) with non-Intel products by Intel’s customers.
• LGE sought royalties from computer manufacturers, and got payments from many.
• Quanta contended that it does not have to pay royalties for its computers containing Intel chips due to patent exhaustion, among other reasons.
The US Supreme Court held that patent exhaustion applies here, partly because Intel did not violate any terms of the LGE-Intel license by selling its chips.
Notwithstanding LGE’s losing, this case illustrates the benefits of having claims directed to multiple potential infringing acts:
• “The sale of a device that practices patent A does not, by virtue of practicing patent A, exhaust patent B.” Slip op. at 15.
• Overall, the Court appears to suggest that a patent license may be drafted in a way to avoid patent exhaustion.
• Conceivably, a patentee may choose not to license a chip maker but sue a computer manufacturer directly for higher damages (no patent exhaustion in this scenario).
Solution
Draft multiple sets of claims (or patents), each set covering a different type of potentially infringing acts in the supply chain (i.e., chip, computer, and network system).
• Increase flexibility in enforcement.
• Increase potential damage awards.
(TO BE CONTINUED)
Well, this is not really a mistake. Too often, however, are claims of a patent application/family directed to one type of potential infringing acts only. The reasons could be that (1) the person who drafts the application does not think ahead and draft claims with an eye towards enforcement, (2) the person who drafts the application does not fully understand the technology roadmap in the market beyond the invention itself, or (3) both.
Examples
• Claims directed to a computer processor chip, but none directed to a computer or a network system using the chip.
Consequence
• Less flexibility in enforcement.
• In the example above, the patentee can only sue on the chip, but not a computer or a network system.
• Potential damages may be negatively affected.
Case Study
In Quanta Computer, Inc. v. LG Electronics, Inc., No. 06-937 (U.S. June 9, 2008), some of key facts and arguments are as follows:
• LGE has patents that are directed to computer chips and computers.
• LGE licensed its patents to Intel for Intel’s chips with the condition that the license does not cover combinations (e.g., computers) with non-Intel products by Intel’s customers.
• LGE sought royalties from computer manufacturers, and got payments from many.
• Quanta contended that it does not have to pay royalties for its computers containing Intel chips due to patent exhaustion, among other reasons.
The US Supreme Court held that patent exhaustion applies here, partly because Intel did not violate any terms of the LGE-Intel license by selling its chips.
Notwithstanding LGE’s losing, this case illustrates the benefits of having claims directed to multiple potential infringing acts:
• “The sale of a device that practices patent A does not, by virtue of practicing patent A, exhaust patent B.” Slip op. at 15.
• Overall, the Court appears to suggest that a patent license may be drafted in a way to avoid patent exhaustion.
• Conceivably, a patentee may choose not to license a chip maker but sue a computer manufacturer directly for higher damages (no patent exhaustion in this scenario).
Solution
Draft multiple sets of claims (or patents), each set covering a different type of potentially infringing acts in the supply chain (i.e., chip, computer, and network system).
• Increase flexibility in enforcement.
• Increase potential damage awards.
(TO BE CONTINUED)
Wednesday, February 4, 2009
Five Common Mistakes of Patent Prosecution from the Enforcement Perspective (Part 2)
Mistake #2: Means-Plus-Function
The second common mistake is improper use of means-plus-function terms in the claims. Means-plus-function elements require that the specification must permit one of ordinary skill in the art to know and understand what structure corresponds to the means limitation. Some improper claims are in means-plus-function form, but the specification does not disclose a corresponding structure. This may seem to be a no-brainer, but you would be surprised how often this happens, especially in software patents.
Examples
• United States Patent No. 5,404,505: “database editing means . . . for generating a hierarchically arranged set of indices… and for embedding said indices in said information database.” And the specification discloses corresponding “software.”
Consequence
• Invalid for lack for definiteness.
Case Study
In Finisar v. DirecTV Group, Inc., 523 F.3d 1323 (Fed. Cir. 2008), the patent at issue is United States Patent No. 5,404,505, and claim 1 recites ““database editing means . . . for generating a hierarchically arranged set of indices… and for embedding said indices in said information database.” The specification discloses corresponding “software.”
The Federal Circuit finds this claim invalid for lack of definiteness. Referring to the part of the specification regarding “software 132,” it found that “[t]his passage provides no description… of structure corresponding to the claimed function” and “software,” without more, is not the requisite structure. Id. at 1340-41.
Solution
Avoid drafting a means-plus-function claim and use alternative approaches. If you have to, always include a corresponding structure.
(TO BE CONTINUED)
The second common mistake is improper use of means-plus-function terms in the claims. Means-plus-function elements require that the specification must permit one of ordinary skill in the art to know and understand what structure corresponds to the means limitation. Some improper claims are in means-plus-function form, but the specification does not disclose a corresponding structure. This may seem to be a no-brainer, but you would be surprised how often this happens, especially in software patents.
Examples
• United States Patent No. 5,404,505: “database editing means . . . for generating a hierarchically arranged set of indices… and for embedding said indices in said information database.” And the specification discloses corresponding “software.”
Consequence
• Invalid for lack for definiteness.
Case Study
In Finisar v. DirecTV Group, Inc., 523 F.3d 1323 (Fed. Cir. 2008), the patent at issue is United States Patent No. 5,404,505, and claim 1 recites ““database editing means . . . for generating a hierarchically arranged set of indices… and for embedding said indices in said information database.” The specification discloses corresponding “software.”
The Federal Circuit finds this claim invalid for lack of definiteness. Referring to the part of the specification regarding “software 132,” it found that “[t]his passage provides no description… of structure corresponding to the claimed function” and “software,” without more, is not the requisite structure. Id. at 1340-41.
Solution
Avoid drafting a means-plus-function claim and use alternative approaches. If you have to, always include a corresponding structure.
(TO BE CONTINUED)
Monday, February 2, 2009
Strategies for Successful Patent Procurement
To develop competitive business advantages, one must develop sound strategies for successful patent procurement. Patent procurement includes not only filing patent applications for a company’s own R&D efforts, but also procuring strategic patents from third parties to support or supplement its own business.
I. Understand Your Business Goals
A major aspect of successful patent procurement is to decide what to patent. To do so, you must understand your business goals and integrate them into your IP strategies.
First, not all your innovations are suitable for patenting. For example, a patent provides your right to exclude others from practicing your invention, but in exchange, your must disclose sufficient information to enable others to appreciate your invention. Therefore, if it is difficult to detect infringing activities, you may choose to protect the innovation as trade secrets. In contrast, if your invention may be easily copied through reverse engineering, you may consider patenting your invention before start selling any products embodying the invention. However, if you choose to protect your invention as trade secrets, you must develop and enforce policies managing trade secrets and preventing technology leakage.
Second, understand why you decide to patent. Obviously, it depends on your business model. If you are a design house and do not make any products, IP is your life line and you must patent to protect your revenue (e.g., royalties from licensing). However, if you are a manufacturer of chips or semiconductor equipment, chances are that you have many direct competitors. What is your strategy, then, for gaining competitive advantages through your IP?
For example, Tokyo Electron Limited (“TEL”), a successfully semiconductor equipment company, uses patents to differentiate its own products and bolster its competitive advantages. [1]
Conversely, a company may choose to patent potential common desirable features of the next generation products to gain competitive advantages. If successful, the company may force its competitors to design around at a higher cost or even drive its competitors out of business.
Therefore, different companies should develop strategies to suit their own business goals. There is no one strategy that fits all. In general, however, understanding your business goals requires you to understand your competitors’ business and develop a decision-making process to patent your innovations that will advance your business goals.
II. Procure Patents to Achieve Your Goals
Once you understand your business goals and understand why you patent, you can then procure strategic patents to achieve your goals.
First, identify technology roadmaps. Certainly, patent mapping will provide some insights as to what areas your competitors already obtained patents in and what areas you may choose to focus your patenting efforts on. Additionally, working closely with your customers and suppliers will help you identify common goals, develop timely solutions, and patent the solutions for your competitive advantages. For example, TEL’s patent strategies include working closely with chip manufacturers, material suppliers, and other equipment suppliers to pursue common goals and provide timely solutions. [2]
Second, provide incentives to inventors to encourage new ideas. Successful companies utilizes one or more incentives, including (1) lump-sum payments at the time of submission of patent applications, (2) bonuses if inventions are commercialized in-house or licensed to third parties, and (3) awards to honor inventors.
Third, acquire patents via multiple avenues. For example, TEL procures patents through (1) global R&D effort with facilities in Japan, Europe, and the U.S., (2) collaboration with industry consortia, universities, and research institutes, and (3) TEL Venture Capital, Inc. (based in California) to discover, assess, and utilize promising technologies on a global scale. [3]
III. Think Outside the Box
Patent procurement is not limited to patenting your own technologies. Successful companies frequently purchase patents from third parties to protect their products and gain competitive advantages.
How about purchase patents unrelated to your products? This may sound like a crazy idea, but thinking outside the box can pay off in the long run.
One of the most anticipated cases in 2008 is the Quanta v. LG case where the U.S. Supreme Court ruled on patent exhaustion issues involving LG’s patents related to computer chips and memories. [4] This case has been discussed extensively by many commentators, so this article will not discuss the details of this case. One fact of this case, however, was often overlooked, as people rarely noticed that LG’s patents-in-suit were originally patented by Wang Laboratories. The USPTO assignment record shows that LG purchased many of Wang Laboratories’ patents related to computer chips and memories in the 1990s after Wang Laboratories filed for bankruptcy.
Why did LG purchase these patents, as LG does not appear to make computer chips and memories? One obvious reason is that LG profited at least hundreds of millions dollars from these patents through royalties from computer makers such as Quanta.
Another subtle reason, however, may lie on LG’s competitive business advantages against its competitors who also make products covered by these Wang patents. Some commentators have observed that LG might have used these patents to achieve business leverages regarding LG products unrelated to Wang patents, when a competitor has strong patents covering LG products, but happens to also make and sell computer products covered by Wang patents. This way, LG might have used these patents as a deterrent to fend off some competitors’ patent infringement lawsuits against LG’s products.
Therefore, developing sound strategies for successful patent procurement may require companies to think outside the box. Finally, execution of these strategies demands the commitment from the top management and the investment for the future.
-----
[1] Tokyo Electron Limited, Annual Report 2006, at 21.
[2] Id.
[3] Id.
[4] Quanta Computer, Inc. v. LG Elec., Inc., No. 06-937, slip op. (S.Ct. June 9, 2008).
I. Understand Your Business Goals
A major aspect of successful patent procurement is to decide what to patent. To do so, you must understand your business goals and integrate them into your IP strategies.
First, not all your innovations are suitable for patenting. For example, a patent provides your right to exclude others from practicing your invention, but in exchange, your must disclose sufficient information to enable others to appreciate your invention. Therefore, if it is difficult to detect infringing activities, you may choose to protect the innovation as trade secrets. In contrast, if your invention may be easily copied through reverse engineering, you may consider patenting your invention before start selling any products embodying the invention. However, if you choose to protect your invention as trade secrets, you must develop and enforce policies managing trade secrets and preventing technology leakage.
Second, understand why you decide to patent. Obviously, it depends on your business model. If you are a design house and do not make any products, IP is your life line and you must patent to protect your revenue (e.g., royalties from licensing). However, if you are a manufacturer of chips or semiconductor equipment, chances are that you have many direct competitors. What is your strategy, then, for gaining competitive advantages through your IP?
For example, Tokyo Electron Limited (“TEL”), a successfully semiconductor equipment company, uses patents to differentiate its own products and bolster its competitive advantages. [1]
Conversely, a company may choose to patent potential common desirable features of the next generation products to gain competitive advantages. If successful, the company may force its competitors to design around at a higher cost or even drive its competitors out of business.
Therefore, different companies should develop strategies to suit their own business goals. There is no one strategy that fits all. In general, however, understanding your business goals requires you to understand your competitors’ business and develop a decision-making process to patent your innovations that will advance your business goals.
II. Procure Patents to Achieve Your Goals
Once you understand your business goals and understand why you patent, you can then procure strategic patents to achieve your goals.
First, identify technology roadmaps. Certainly, patent mapping will provide some insights as to what areas your competitors already obtained patents in and what areas you may choose to focus your patenting efforts on. Additionally, working closely with your customers and suppliers will help you identify common goals, develop timely solutions, and patent the solutions for your competitive advantages. For example, TEL’s patent strategies include working closely with chip manufacturers, material suppliers, and other equipment suppliers to pursue common goals and provide timely solutions. [2]
Second, provide incentives to inventors to encourage new ideas. Successful companies utilizes one or more incentives, including (1) lump-sum payments at the time of submission of patent applications, (2) bonuses if inventions are commercialized in-house or licensed to third parties, and (3) awards to honor inventors.
Third, acquire patents via multiple avenues. For example, TEL procures patents through (1) global R&D effort with facilities in Japan, Europe, and the U.S., (2) collaboration with industry consortia, universities, and research institutes, and (3) TEL Venture Capital, Inc. (based in California) to discover, assess, and utilize promising technologies on a global scale. [3]
III. Think Outside the Box
Patent procurement is not limited to patenting your own technologies. Successful companies frequently purchase patents from third parties to protect their products and gain competitive advantages.
How about purchase patents unrelated to your products? This may sound like a crazy idea, but thinking outside the box can pay off in the long run.
One of the most anticipated cases in 2008 is the Quanta v. LG case where the U.S. Supreme Court ruled on patent exhaustion issues involving LG’s patents related to computer chips and memories. [4] This case has been discussed extensively by many commentators, so this article will not discuss the details of this case. One fact of this case, however, was often overlooked, as people rarely noticed that LG’s patents-in-suit were originally patented by Wang Laboratories. The USPTO assignment record shows that LG purchased many of Wang Laboratories’ patents related to computer chips and memories in the 1990s after Wang Laboratories filed for bankruptcy.
Why did LG purchase these patents, as LG does not appear to make computer chips and memories? One obvious reason is that LG profited at least hundreds of millions dollars from these patents through royalties from computer makers such as Quanta.
Another subtle reason, however, may lie on LG’s competitive business advantages against its competitors who also make products covered by these Wang patents. Some commentators have observed that LG might have used these patents to achieve business leverages regarding LG products unrelated to Wang patents, when a competitor has strong patents covering LG products, but happens to also make and sell computer products covered by Wang patents. This way, LG might have used these patents as a deterrent to fend off some competitors’ patent infringement lawsuits against LG’s products.
Therefore, developing sound strategies for successful patent procurement may require companies to think outside the box. Finally, execution of these strategies demands the commitment from the top management and the investment for the future.
-----
[1] Tokyo Electron Limited, Annual Report 2006, at 21.
[2] Id.
[3] Id.
[4] Quanta Computer, Inc. v. LG Elec., Inc., No. 06-937, slip op. (S.Ct. June 9, 2008).
Five Common Mistakes of Patent Prosecution from the Enforcement Perspective (Part 1)
Mistake #1: The Invention?
The first common mistake is describing the scope of the invention using over-precise language. This may occur in the specification or in a response to Office Action. For foreign originated applications, this is often caused by translation errors.
Examples
• “According to the invention”
• “The invention is/does”
• “According to the method/apparatus of the invention”
• “The method/apparatus of the invention is/does”
Consequence
• Narrower claim construction.
Case Study
In Praxair, Inc. v. ATMI, Inc., No. Civ. 03-1158-SLR, 2005 WL 2989767 (D. Del. Nov. 8, 2005), the parties dispute the meaning of “pressurized fluid” in the claims of U.S. Patent No. 6,007,609, and whether this term covers gas phase fluid only or other fluids as well.
According to the patent specification, “[t]he apparatus of this invention provides a flow restriction in the storage container . . . that will positively limit the discharge of gas phase fluid from the container . . .” ’609 patent at col. 3, ll. 54-58.
Citing the above disclosure, the court construed “pressurized fluid” to mean “gas phase pressurized fluid.” Praxair, 2005 WL 2989767, at * 3.
Solution
One may consider using broad language instead:
• “Consistent with the invention”
• “Consistent with the method/apparatus of the invention”
• “According to an embodiment of the invention”
(TO BE CONTINUED)
The first common mistake is describing the scope of the invention using over-precise language. This may occur in the specification or in a response to Office Action. For foreign originated applications, this is often caused by translation errors.
Examples
• “According to the invention”
• “The invention is/does”
• “According to the method/apparatus of the invention”
• “The method/apparatus of the invention is/does”
Consequence
• Narrower claim construction.
Case Study
In Praxair, Inc. v. ATMI, Inc., No. Civ. 03-1158-SLR, 2005 WL 2989767 (D. Del. Nov. 8, 2005), the parties dispute the meaning of “pressurized fluid” in the claims of U.S. Patent No. 6,007,609, and whether this term covers gas phase fluid only or other fluids as well.
According to the patent specification, “[t]he apparatus of this invention provides a flow restriction in the storage container . . . that will positively limit the discharge of gas phase fluid from the container . . .” ’609 patent at col. 3, ll. 54-58.
Citing the above disclosure, the court construed “pressurized fluid” to mean “gas phase pressurized fluid.” Praxair, 2005 WL 2989767, at * 3.
Solution
One may consider using broad language instead:
• “Consistent with the invention”
• “Consistent with the method/apparatus of the invention”
• “According to an embodiment of the invention”
(TO BE CONTINUED)
Five Common Mistakes of Patent Prosecution from the Enforcement Perspective (Introduction)
We all know that obtaining a patent should not be the goal, but merely means to the goal. Typically, a patentee wants to (1) gain competitive business advantages by excluding its competitors from using the patent in their products, or (2) capitalize the value through licensing the patent.
To achieve either goal, a patentee needs to answer at least the following questions:
• What is the value of your patent?
• Is your patent valid?
• Is your patent enforceable?
Patent valuation is a complex topic and will be discussed at another time. Suffice to say, however, that the value of a patent is directly tied to its validity, enforceability, and claim scope. To successfully enforce a patent, one must first draft and prosecute patents properly and avoid five common mistakes of patent prosecution.
(TO BE CONTINUED)
To achieve either goal, a patentee needs to answer at least the following questions:
• What is the value of your patent?
• Is your patent valid?
• Is your patent enforceable?
Patent valuation is a complex topic and will be discussed at another time. Suffice to say, however, that the value of a patent is directly tied to its validity, enforceability, and claim scope. To successfully enforce a patent, one must first draft and prosecute patents properly and avoid five common mistakes of patent prosecution.
(TO BE CONTINUED)
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