Patently Strategic - Patent Strategy for Startups
Patently Strategic - Patent Strategy for Startups
Patent Claims: The Name of the Game
We’re talking about claims – the fundamental building blocks of a patent. There simply is not a more important concept to grasp in all of patenting. As a former chief justice of the Federal Circuit once famously said, “The name of the game is the claim.” And in terms of what game you’re playing, the claims are where you separate the patents playing checkers from the patents playing chess.
This is where your patent practitioner earns their money and as you’ll learn today, also where the most costly mistakes can be born. As David Cohen, a Patently Strategic regular, has said in the past, "Ninety percent of the mental exercise in drafting patents is in the strategy of looking around corners, anticipating the future, and trying to capture as many would-be infringers as possible.” How your claims are crafted is literally the difference between a patent being an intellectual asset and a worthless stack of paper.
In this month’s episode, Ty Davis, Patent Strategy Associate here at Aurora, leads a discussion, along with our all star patent panel, delving deeply into:
⦿ Claim fundamentals
⦿ Claim drafting strategies
⦿ How to think about claims in the context of infringement
⦿ And in the game of patenting, how to move like a queen, so you’re not treated like a pawn.
Ty is joined by our always exceptional group of IP experts, including:
⦿ Dr. Ashley Sloat, President and Director of Patent Strategy at Aurora
⦿ Kristen Hansen, Patent Strategist at Aurora
⦿ Dr. David Jackrel, President of Jackrel Consulting
⦿ Marie Smyth, Patent Agent, formerly with Greenberg Traurig and Meta
⦿ Porter Thames, J.D. and Patent Agent at SMU Science and Technology Law Review
** Mossoff Minute **
This month's Mossoff Minute, featuring Professor Adam Mossoff, looks at the poorly named Advancing America's Interests Act and its potential impact on the ITC being able to block import of products that infringe on American patents.
** Resources **
⦿ Patent Anatomy Episode: https://www.aurorapatents.com/blog/new-podcast-patent-anatomy
⦿ Patent Anatomy Guide: https://www.aurorapatents.com/blog/patent-anatomy-whats-in-a-patent
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Thanks for listening!
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Note: The contents of this podcast do not constitute legal advice.
Josh: G'day, and welcome to the Patently Strategic Podcast, where we discuss all things at the intersection of business, technology, and patents. This podcast is a monthly discussion amongst experts in the field of patenting. It's for inventors, founders, and IP professionals alike, established or aspiring. And in today's episode, we're talking about claims, the fundamental building blocks of a patent.
There simply is not a more important concept to grasp in all of patenting. As a former Chief Justice of the Federal Circuit once famously said, the name of the game is the claim. And in terms of what game you're playing, the claims are where you separate the patents playing checkers from the patents playing chess.
This is where your patent practitioner earns their money, and as you'll learn today, also where the most costly mistakes can be born. As David Cohen, a Patently Strategic Regular, has said in the past, 90 percent of the mental exercise in drafting patents is in the strategy of looking around corners, anticipating the future, and trying to capture as many would be infringers as possible.
For those newer to patenting, it really helps to understand the purpose of a claim. Claims are often referred to as the meets and bounds of a patent. Said another way, Claims define the subject matter that is protected by the patent or sought to be protected by the patent application, delineating the exact boundaries of what the inventor believes they are entitled to own.
Once allowed, a patent is treated like a property with boundaries. As such, the claims define what the patent owner receives a limited monopoly upon in return for the knowledge that is dedicated to the public from the patent's disclosure. Beyond the Patent Office initially deciding whether or not to issue your patent based on whether or not your claims are eligible, useful, novel, non obvious, and enabled, the boundaries of these claims will very much be the focus of judges and juries down the line should you ever need to defend or assert your property rights.
There's a tremendous amount of nuance to all of this that can certainly seem pedantic on its face, but how your claims are crafted is literally the difference between a patent being an intellectual asset and a worthless stack of paper. In this month's episode, Ty Davis, Patent Strategy Associate here at Aurora, leads a discussion along with our all star patent panel, delving deeply into claim fundamentals, claim drafting strategies, how to think about claims in the context of infringement.
And in the game of patenting, how to move like a queen so you're not treated like a pawn. This episode features some exceptional conversation from the experts on the panel, and Ty makes for the perfect host in providing a bridge between the inventors and the practitioners in our audience. Ty was introduced to the patent world from the inventor and startup side of things.
So in thinking about the audience for this episode, he crafted the talk for the 6 years ago version of himself, focusing on a lot of the things he wished he had known about claims and infringement as an inventor and early startup founder. He starts on the remedial side and works his way into some very illustrative infringement case studies and how claims can be used in conjunction with a business plan.
This episode will serve as part one in a three part series on claims. The upcoming episodes will focus more on claims construction and then the interplay between claim construction and the criteria of the Disclosure Benchmark for what's referred to in industry as a person having ordinary skill in the art.
But more on these in the coming months. Tide does a great job today of providing the necessary context for those newer to patenting, but the group does talk about things like the application specification or spec in relation to the claims. For anyone out there who'd like to get a better understanding of the various parts of a patent application relative to the claims, I highly recommend you check out our exceptional episode from Season 1 on Patent Anatomy.
We'll link to both of those in the show notes, but as someone coming into this world from the technical and not legal side of things, the interview we did for that episode has helped me with my understanding more than any other. Ty is joined by our always exceptional group of IP experts, including Dr.
Ashley Sloat, President and Director of Patent Strategy at Aurora, Kristen Hanson, Patent Strategist at Aurora, David Jackrell, President of Jackrell Consulting. Marie Smith, Patent Agent, formerly with NETA, and Porter Thames, J. D. and Patent Agent at SMU Science and Technology Law Review. As an added bonus, before getting into our introductory content on claims, as an ice breaker before getting into the thick on topics, our panel usually plays a little game we call Patentary.
It's like Pictionary, but the presenter shows and describes a patent drawing and everyone on the panel has to guess what it is. These don't always make the cut for reasons of time, but this one was particularly good, and I couldn't help but leave it in for the episode. Kristen also shares a great strategy tidbit with the group from a conversation she recently had with an examiner on overcoming 101 software rejections.
And finally, before jumping into the panel, We'd like to take you to the next installment of the Mossoff Minute, a new monthly segment that builds on our Patent Wars episode and features short conversations with Professor Adam Mossoff, providing updates and quick takes on movements in patent reform, significant court rulings, innovation policy happenings, and occasional Star Wars references.
This month's minute is especially timely for today's episode because Adam talks about the International Trade Commission and its role in preventing the import of products that infringe on U. S. patents.
Adam: This year in patent policy, we've seen a continuation of an attack on a little known court known as the International Trade Commission.
For over a decade, bills have been introduced in Congress to close the doors of the International Trade Commission to U. S. patent owners. Why? Well, Big Tech and its allies have been held accountable by the ITC for its piracy of U. S. Inventors patents. Unable to stop this from occurring at the ITC, they seek to close the door and prevent U.
S. Inventors from receiving protection of their rights by this court. The bill this year... It goes by advancing the American Interest Act, classic Washington Orwellian doublespeak, and neither protects American interests, advances them. In fact, it protects and advances the interests of China because the UITC is preventing infringing imports of products made by Apple and others from China into the United States with something called an exclusion order, which is like an injunction.
This bill should be opposed. And the U. S. inventors should be protected and secured in their rights.
Josh: We're also publishing clips from the Mossoff Minute as short form videos on Instagram Reels, YouTube Shorts, and TikTok. You can check out these shorts and follow us at Aurora Patents on all three platforms.
Now without further ado, Here's our conversation on claim strategies. Take it away, Ty. So I'll start
Ty: with the icebreaker and then kind of introduce myself and the presentation. I'm going to give a little bit, a little bit more into the icebreaker than we usually do, because this is a, this is a funky one, but I was doing a little bit of research and just kind of odd inventions, stuff you'd never think to be invented.
Um, and to give you a little more on this one, the problem statement is In apartments, children and babies do not have sufficient access to fresh air. And this is a patent from 1922, so um, ethics are going to be quite a bit lower. Quite a bit
Ashley: lower, but you know, standards of living were maybe
Ty: a little bit lower.
Yeah, no, you know, that's, that's, that's good. So fresh air, children, apartments, not, not a lot of access to backyards or patios. Is it like a
Ashley: grazable roof or something?
Ty: Uh, it attaches to a window. So it might be, it might be a little tricky. I mean, I hesitate to
David: even say it,
Ty: but it looks like a swing.
Ashley: Yeah, yeah, or like a crib attached to like a windowsill somehow.
Yeah,
Ty: it looks like a crib
David: swinging out of the window. We just came back from some amusement parks and so it kind of, right, it looks, it looks like it could be fun for
Ty: some kids. Bingo, bingo. I would say, I mean, that's a better way to put it, crib. Um, it is patented as a baby cage for apartment.
Ashley: Not what I was picturing. I was thinking, like, inside the building, like, wow. Yeah.
Ty: Okay.
David: It looks a little more Mad Max than I was imagining.
Ty: Yeah, it became popular in London in the 1930s.
Ashley: I mean, It looks terrifying, but if the baby could like roll back into their crib and the safety, you know, I don't know if it was really secure. Yeah, I don't know. I don't know if I'd
Ty: break it in it, but Were to yeah how you're attaching it securely to the building at least
Porter: I think installation here is the most important part of the
Ty: the baby cage
Kristen: I like it for a dog kennel off the second floor though.
Yeah,
Ashley: there you go. Assuming installation is proper. Right.
David: None of them, none of them had fear of heights growing up. They were all
Ty: perfectly
Josh: fine. That we
Ashley: know of. You know.
Ty: Anyways, I thought that one was a... Pretty interesting one. Figured it'd be a good icebreaker.
Ashley: Here's the real question, Ty. Would you put your kid in a baby cage off of a second Dear Wendy story?
If
Ty: I built it, probably not. I'd be like, oh yeah, that was bold. I forgot about that. It's an extra
Ashley: piece. I don't know what I wouldn't do. It's always an extra bolt.
Ty: That's right. Then we, uh, we go to the shared problem solving, um, tidbit and see if anybody had any, uh, funny strategy tidbits, um, any problems encountering at the USPTO or, um, technical issues.
Any, any interesting, I had one,
Kristen: I had one come up last week about responding to abstract idea 1 0 1 rejections and I had an examiner of a mechanical based art unit. It was med device. Say that a way to overcome some of these one oh ones is in your software that goes along with your device, um, is to put the content of the claim and what's going on in one of the elements.
In real time or in near real time, so it was almost as if this something more could be making sure that you could overcome this human aspect of going through your algorithm by making this impossible to do in near real time or in real time. So he did not like the argument that, you know, we have. Uh, millions of, of, uh, readings, they come in, there's decisions made, and they make, and they create an output.
He did not like the argument that said, well, just because there's a million decisions or a million pieces of, of data doesn't mean the human couldn't possibly go through it. So the argument was, if you could put something like in near real time or in real time. In the claim for an aspect that would be enough to overcome the one on one rejection.
So I don't always have that opportunity, I don't always have that in the specification, and I quite honestly don't always want it, but I thought it was interesting to hear one way of
Ashley: overcoming. I feel like some examiners could view that as, like, just a drafting, um, uh, like a draftsman, you know, design choice.
Kristen: Yeah. Yeah. I'm not sure. I didn't do it. Um, I think there's better ways to overcome, but I just thought it was an interesting thing this far in to the 101 landscape to hear an examiner say, well, it's easy if it's if it's in real time, a human can possibly do this. So.
Ashley: Unless they had Neuralink implanted in their brain.
Um, okay. Interesting.
Ty: All right. Well, I'm going to jump into it. Um, we do have quite a bit to cover here. Um, and I just wanted to kind of introduce myself for Border and Marie. Um, I'm Ty, Ty Davis. I, uh, Kind of got my start into, um, intellectual property on like the startup side, um, playing with it there and, and, uh, a lot of that kind of, I don't know, crafted my perspective and, and this talk largely, I would say my audience is almost myself back then, a lot of things I wish I knew, um, and it largely revolves around claims infringement, um, stuff of that nature.
So, Uh, I mean, to best summarize it would be claim strategies, but I was going to start out kind of, it's going to be a little bit on the remedial side at the beginning, um, because of that, um, and then kind of work our way so in, in, into, um, kind of infringement, infringers. And maybe some example, well, some example case studies, um, one being a little bit on this more simplistic side, and then one that had a little bit more meat, a little bit of a spider web of, of, of a portfolio and, and how, um, claims can be used, um, in, in conjunction with sort of a business plan, and then, um, conclude with, with a takeaway.
So, if that all sounds good, I'm going to jump right into it. All right, so I think pretty good summary quote of. Of claims would come from Giles Rich, Chief Judge of the Federal Circuit, 1982 to 1999, where he said the name of the game is the claim, you know, in the in the patent, in the theory of the patent process.
Uh, we are teaching somebody how to make and practice the invention, and what we get in return is a, uh, a limited monopoly on, on that invention. Um, and so that claim is what we are seeking to be protected by the patent, or we're... Seeking to in the patent application. Um, it's often, you know, alluded to as sort of the meat, meat and bounds of the patent.
So, uh, you know, what are the elements that define our, our invention? Um, and one thing that The, the most simplest way to put it, um, you know, if we were to claim an invention that was A, B and C, uh, there would not be any infringement on, on just copying A and B. Uh, you have to, you know, every limitation of that invention.
So A, B and C would constitute infringement. Um, A, B, C and D would also, but you could... You know, pursue that D element in a, uh, in a patent, but not may not be able to actually operate, um, operate that invention. So there's a lot going on there that we'll kind of get a little bit further detail on.
And, uh, please feel free to jump in, um, and, and add anything that anybody would like to definitely get a lot more breadth to the, to the presentation. But in terms of a utility patent, um, you know, we can, we can patent, um. patent several different things. So a machine being, um, apparatus, a system, um, a device, you know, and I kind of listed a, a set of examples here that largely follow, uh, paving.
So for example, a new useful paving machine, um, we could patent a, a process, um, an example being a new and useful method of, of paving, maybe a new useful, uh, method of. Of using that paving machine, um, method of treatment is an interesting, uh, subcategory of that, which I have a, uh, following presentation or a following slide for that to get a little bit more detail, um, article of manufacture being a little bit more on the simple side, um, maybe we're talking about a, a shovel used for paving, um, maybe a crowbar or, uh, Um, composition of matter when we're talking about, uh, you know, we could be talking about pharmaceuticals, um, any way of composing matter.
Um, you know, example, following that paving example, maybe a new pavement composition. Um, and then finally. any new and useful improvement of those claim transitions. Um, this is something that I remember being a little intimidating to me whenever I first started kind of studying up on this. Um, you know, the use of comprising versus consisting and, and really the ramifications of that.
I mean, they're, as we all know, they're pretty large, uh, comprising. Being the most common claim transition, every claim transition has to, every claim has to have a claim transition. So a device comprising, and then you, you, you list your limitations. Um, comprising is an open ended claim transition, which means that, um, any.
It can be combined with any element known in the art with reasonable motivation for a facility to combine, um, consisting of. Actually limits your claim to the recited elements, um, and infers that the invention is only as described, um, maybe chemical, pharmaceutical, biotech, or maybe an art that's kind of unpredictable, um, and as far as getting your guys input, um, you know, comprising, that's really all I've ever used, um, I was going to see if anybody had any examples of, you know, consisting or consisting essentially of, Okay.
I have used consisting
David: very rarely. I totally agree with you. Comprising is like by far the most common, right. But consisting sometimes in materials claims and the one I can think of the best example, someone was literally talking about a mono layer of. You know, they were, they were depositing a monolayer of a certain compound on another thing.
And that monolayer consisted of these particular functional groups. Um, and and so that, you know, that was that was a very narrow situation. Um, but I actually wanted to make another comment on consisting essentially of. I, I, we may have talked about this in an earlier podcast. I saw a, uh, a, a, an article and, and a case that came up in the past year or two about this, which was that, um, it's really a, a trap consisting essentially of is very difficult to use robustly and that it'll hold up in litigation.
And mainly what you have right there is exactly why. May include elements which do not materially affect the invention. So if your specification doesn't very, very clearly define what materially affects the invention. You're it, the claim is indefinite. If you say consisting, essentially of. Therefore, it can include X, Y, and Z materially, you know, affects the invention.
You need to describe really well all the different things that do materially and don't materially affect the invention. And if you haven't described one of those things and a gray area comes up, someone's going to say we don't infringe and it's indefinite and it's really difficult. I would suggest never using it, honestly, because it's like, I would say.
Next to impossible, um, to use at least from certain case laws, uh, you know, reading of it, um, very difficult to use properly.
Ashley: Yeah, and I think that's interesting point too, because I think my experience with these terms is also in more of the material space and the only. Way 1, I've seen these are like independent claims were like, this case was like contact lenses, which is so the invention was really around coatings on contact lenses.
So it was like, where the contact lens. Is consisting of silicone or consisting essentially of silicone. So it wasn't even core to their invention. It's the fact that they were depositing it on something. What was that? Something but I agree. I mean, I've heard from a consisting essentially of, you know, because I can at least in the pharma space, biotech space.
It's really hard to say whether something does or does not mean, because even a pH change, which seems like it's not a big deal, like, oh, that's not going to materially affect the invention, but could actually have really drastic implications for. You know, how it forms the monolayer or how it reacts in vivo or how it does different things.
So, um, yeah, I think it'd be really hard to use. I mean, there's probably still some use cases for it, but I don't know if anybody else has any experience with that. I do,
Kristen: and every piece of case law I've ever read on consisting essentially of is a warning. Um, I think there's no need for it. Be clear in what you actually mean and use the other terms comprising and consisting of because they do have clear definitions and case law has been very clear.
Um, the one thing I have to add about these three terms, be really careful using these three terms in the specification, if at all. They belong in the claims. They belong in the summary when you're reiterating a claim, and you can maybe be okay in the specification proper in the detailed description using comprising or consisting of if you are only reciting claim language, and then you follow it up with a for example, blah, blah, blah, includes, or also includes or anything that makes it more clear exactly what you mean.
And I say this because other countries have different case law and different requirements for comprising and consisting of, and you want to make sure you cover it several ways. So while I think you can keep it in the claim with comprising and consisting of pretty conveniently, um, just be careful in the specification.
Marie: Yeah. One thing I wanted to mention in this too, is the word essentially, I try to avoid substantially. Essentially, um, those I have found in the past that with some examiners that just sort of sets a flag for them, and you can get into, I don't know, just, it gets to the point where unless you really have very specific.
support for what you mean by those terms in your specification. Um, you're just, it, it's a never ending battle as to what it's about. I, in the claims, I think it makes more sense to just be clear about what it is and not use terms like that. I don't know if they get you anywhere. I mean, is that been other people's experience in this?
Ashley: Actually, the question I have for you, Marie, is what do you, you have some clients that like substantially, like, when you have ranges of things, especially in like, fluidics and optics, or even in the chemical sciences. You don't want there to be hard and fast limits on ranges. You know, if you want there to be some gray area around them, even in the claims, right?
That's not just you only infringe when you get to 50 nanomolar as well. If you're at 49. 9 animal, or that still counts. Right? Right. So, what terms have you found to use, I do agree that some of our examiners, if you put about in a claim or substantially they want it out of there, but some like, some are okay with it.
Where do you find, you know, how do you account for that gray area in claims? Um, I,
Marie: I've used the term approximately and then make sure that in the specification I define what I mean by that. And when you talk about particular ranges, you may, um, give examples or you may define what the range can be. You can, you could literally devote an entire paragraph to how you may want to.
Define what you mean by, um, approximately and in doing that, um, I think I've always included what would be, I want to say, valid doable numbers as opposed to just trying to cover every single value that it could be. So you want enablement in there also when you're doing that definition, um, doing, having done it that way.
I really haven't had a lot of pushback on. the term approximately, as long as it's, as long as you define what you mean by that. I have had instances where the spec, I will say, I didn't write these, said approximately And never, never defined what it meant by that. Is it, you know, is it within tenths or hundredths or thousands or, you know, whatever, to get just some, um, real numbers for enablement in there for what you mean by approximately.
If I have that in there, I've, I've gotten very little of any pushback from the examiners because you can point to where you have the support in the spec.
David: Yeah, I agree. Maria. It's a great point. I, I absolutely think that the, um, sometimes there's a place. For those terms and and having it really clearly defined in the spec, sometimes even in quotes, um, like I for a chemical patent, you know, we had something that was water free or oxygen free, but nothing is ever truly down to the, you know, parts per trillion water free.
So it was substantially oxygen free in quotes that, for example, um, Less than 1 percent or less than 0. 01 percent to kind of make that more meaningful. And it actually, I remember a case where we had that term substantially, something like that in the claim and the examiner gave us a 112 rejection, but we had that really clear definition in the spec.
We pointed to it and they withdrew. They said, Oh, okay. I see what you mean by that. And I feel like also that was, um, You know, it was in the prosecution record at that point. So it was not only, you know, it was even easier for, for people down the road to say, what does this claim really mean? You say substantially water free in a, in an office action response.
We say, Hey, look at this paragraph, substantially water free means this. So the examiner may have been more comfortable with it, like having it in the, in the prosecution history, maybe, but I don't know, having it in the specification clearly defined. Yeah, I think, uh, solves a lot of those
Ty: issues. Yeah.
Awesome. I kind of was going to lean on you guys. Um, it was a good move, like really good input there. Appreciate it. So yeah, it alluded to earlier, um, method of treatment claims. Just wanted to kind of mention, you know, uh, mention this one. It's pretty interesting. Um, once again, I have pretty little experience here, but, um, these claims are for the treatment of a human subject, uh, a method, uh, of treatment for a human subject and can be patentable in the United States.
Thank you. Australia and Russia. There could be others, but in my research, that's what I came across. Um, those were the recurring countries. Um, many countries, including Canada, China, um, Israel, Japan, South Korea, Taiwan, do not allow the, the patenting of these method treatments, um, but also in that research.
I came across a couple write ups and blogs as far as how you can kind of reform or rephrase, um, your claims to, to find, to get to that patentable subject matter. Um, but they typically take the form of a method, method of treating a medical condition, um, which comprises administering, administering to a subject an effective amount of perhaps compound Y.
So those are, those are kind of interesting.
Porter: Ty, I'm curious. Uh, did you, when you were, when you were looking into, uh, when you were doing that research, did, uh, you know, that's, that's a lot of countries, um, that would not allow that to be patented today. Were there any blogs or sources that, that talked about the public policy reasons, uh, behind those countries?
Um, uh, patent, uh, the stamps that they have, why, why that wouldn't be patentable and, and why
Ty: it is here. Well, and I, I think, um, a good example of that, and correct me if I'm wrong, Ashley, but like, uh, Europe, I remember seeing that, you know, as soon as you're involving a human subject, um, that is then beyond the scope of patentable subject matter.
That, that was an example.
Ashley: So I think the main policy reason is I think they don't want. Monopolies on
Porter: treatment
Ashley: to prevent them from practicing medicine. Sure. Yeah. So it's kind of protecting physicians and their ability to actually practice their trade, um, you know, involving human. There is definitely a line because, you know, we've gotten claims in Europe where it's, you know, Clearly wearable devices that are meant, you know, even like in the pregnancy space meant to detect different things for a fetus.
So clearly. A woman needs to be wearing it for it to be able to detect the fetus. You know, and so, but you do, you do want to lean on your foreign associates in those places where you are attempting to do pseudo. Method of treatment, like it's pseudo, like diagnostic slash IOT guy stuff. You want to lean on your foreign associates and say, this is what I'm thinking.
This comport with what, you know, how you all would frame and if you were trying to protect this innovation, but in general, I mean, you just, you're kind of limited in those countries to where. Um, you do just get composition claims and you do get device claims and system claims, but, you know, but that's where you'll see some of the interesting divide.
And I would argue where some of the success of the biotech and where biotech the reason biotech started here and really grew here. Is because we do allow method of treatment, right? It allows really for companies to lock up spaces and, and drug repurposing is a big thing. And, you know, the, the, you know, skinny labels versus, um, off label uses and all that kind of stuff is a really big thing.
And I would argue that's why it's been really successful here about tech has been really successful here. We've been a powerhouse for drug manufacturing and creation and innovation. Is because we've had this kind of broad view of what is protectable in that space. I didn't know Russia. Nobody Russia, but that's a new one for me.
I knew Australian us. I didn't I didn't know Russia.
Ty: Yeah, that makes sense. Thanks. The next next slide. I, this is kind of, you know, what, like I said at the beginning, kind of some advice for myself. If I was audience six, six years ago, but, um, when we, when we claim the application, uh, you know, this to me is very important, um, being clear, uh, shouldn't allow for speculation.
Right. So to me, I remember, you know, almost it was poor advice, definitely saying that up front, but I remember reading blogs in certain advice columns were advocating for unclear or. Um, broad terms, you know, not, not giving yourself, you know, a lot of flexibility with your patent application. And I remember looking back now how that was kind of poor, poor, uh, poor advice.
So, you know, not only for, for prosecution being clear, but also in practicing your invention. So, if you're not clear with what you're, what you're claiming. How are you going to, um, practice your invention, uh, being supported. So everything that you're claiming needs to be supported in the description and the drawings, um, and being complete.
So should cover the invention adequately, adequately. Um, shouldn't be too broad, too narrow. Find that, that, that sweet spot, um, of the right amount of protection. Um, and I think that that's. You know, part of that balance and what you're giving versus what you're receiving, right? So if you're teaching a lot, you know, you're going to have a little bit more to claim.
Um, and then the last, this is just kind of for me, the engineering perspective is, you know, not to forget that you are trying to capture the idea, um, not the design. Uh, and I remember really well. Looking at like my dad had a few patents and just being before I had any experience on the IP side being disappointed in the figures that were actually in publication because they were, they were abstract away from the design, you know, and I'm like, man, there's, there's so much beauty in the design.
But the effectiveness is not the design in the patent. So that was a big one for me to kind of understand, like, even as the early applications that I was drafting, I wanted to put so much detail into the design and getting lost in that instead of focusing on the idea.
Ashley: But the asterisk there is you still want all those details, but it shouldn't be the sole focus, right?
I mean, it's. Achieving breath through specificity, right? So you still want those big. Figures that kind of abstract away, but then you still want all the nitty gritty too. Um, but I agree a lot of engineers. It's the beauty is the design, but sometimes it's like, well, what's the abstracting away to? What was the problem and the solution?
And how is that? What's the bigger umbrella, right?
Ty: Yeah, I guess I'm getting a little bit, being a little more specific there is the aesthetics. Aesthetics is not, not important.
Kristen: There is kind of a reason, though, to not do a lot of abstracted out figures and not to, um, First of all, it's expensive because it takes you more time to come up with that kind of concept and idea, and describe that in addition to all of your detailed content that you need.
But also, you should have at least one figure, um, within your figure deck that is sort of a jury figure, because that piece... If you ever need it and you, your claims are on trial, it's really, really good to get a jury to walk with you and understand your plight and understand the invention before they go into the details because they are so complex.
Um, so if you can have one of those, and I tend to make it figure one, but it doesn't have to be. If you can have one of those that, that takes you miles, if you're ever litigated now, you know, most patents aren't. But. It's very good with an examiner, too, because they pick up the case and they understand quickly what your invention is.
Ty: Yeah, that, oh, that's great. Yeah, I like jury figure. That's, that's. Yeah,
Kristen: that's not mine. I, I was trained on that from years ago. That was, I don't, I don't even know who claims to that. Maybe, maybe John Dragsath at Fish and Richardson. I don't know.
Marie: Yeah, drag Seth Kristen. That's why I remember, um, to, to bring more to that point that Kristen just mentioned in talking to some of the litigators at, at, um, meta and trying to understand, um, What we can do as practitioners to maybe make their life easier, to allow them to make their point clearer and quicker in front of a jury, a lot of that came to mind.
Um, to have a way for them to explain the invention to maybe some non technical people. To understand what improvements, uh, are being made to what benefits are being accomplished by this particular invention. Or in other words, how are you doing good by, by doing this? That I guess, um, kind of gets to the human aspect of things.
And in ways I, I sometimes think, especially as an engineer, I look for all the technical aspects of things, but to kind of look at it from a higher level. to see if you had to explain it. What are you doing? What are you improving on? What are the benefits of what you're doing? And that I, by many, by the litigators we were talking to in MEDA goes a long way.
And again, in the context of MEDA, where we understand that they're more in the social networking type of arena. Um, but I would think for some of the pharma people also in, uh, treatments and whatever, what you're trying to do for the Greater good to make it, um, clear, having a figure you can point to is beneficial.
Um, so. I'm kind of looking at things in that way, and some of my prosecution I'm doing now is I write some of these applications to try and see how I can do that simply in either one figure and or paragraph to just make sure that point comes across. I also think it helps when you sit down with an examiner to just tell them, Hey, here's how this is used.
Here's why someone would want to use it. Here's the benefits of using it. And here's what, you know, we want to try to capture the details of in a claim. So I don't know if other people have had that experience or have looked at their applications in the same light.
Josh: I really
Porter: like, uh, everything that y'all just said and Ty, when you talked about how, um, I think that's really funny that you, uh, uh, when you were looking at your father's patents and you were like, what the heck, you know, like, this isn't, uh, you know, maybe exactly.
What the prototype, like the, the figure or the claims don't, uh, describe the prototype that's on the desk or, you know, in the garage, but, um, but, but that's a good thing. Um, I would say generally, uh, because, because you do, it is so very important to, um, step back and, um, And determine, um, what, you know, a client can bring you a design or prototype schematics, whatever.
But if, if they have solved some kind of problem and truly brought something that's innovative, that that's where our. Entire value is to clients and securing their intellectual property or potential property is, is taking that and then going into the abstract. Uh, and sometimes that's, that's a, it's a real pain and it requires a lot more work, um, cause it's a lot easier to write.
More narrow claims, but, um, and secure a patent. But, but like Marie was saying, you, you've gotta think about how a, a judge or a jury will, will look at the claims and, um, and make sure everything's supported, of course. But, uh, um, you, you, you do need to think about. Um, well, I think it's very important to think about how claims that you are drafting.
Will be could be litigated later on and then that can kind of you know, you say okay I need to change this word here You know move this limitation down to the dependent at first, you know, see how that goes. I I uh Yeah, sorry, I, but, uh, uh, yeah, I think that's very, very important, probably the most important thing to do when you're, uh, drafting an application.
Ty: Yeah, that's great. Appreciate all the input. That's very good. So, continuing on that, um, yeah, you can't, can't talk about claims without breaking down into independent claims and dependent, um, independent claims. Are going to be standalone and it's, it's a big part for me when I'm drafting is, is drilling down to what the actual minimum limitations or elements, um, for the invention to function.
Um, I think that that's a pretty big step in, in figuring that out. And then. You know, we can, we can pick up those alternatives, um, even alternative embodiments, maybe added capabilities, um, and add breadth, breadth to that independent claim with dependent claims. That one's pretty, pretty straightforward. I didn't figure there'd be too much discussion.
Um, claim strategies. So yeah, big pic, big picture looking at primary and kind of secondary considerations. Uh, what, what is the invention? Uh, of course that, that comes to the forefront. That's almost so simple. It's, you almost don't need to say it, but I do think that things can get overlooked and stepped up, stepped over if you don't really drill down to what the invention is, what the prior art is.
Um, what we're doing differently, um, how we're doing it better. Um, and then you can even look at secondary considerations. Uh, what, what is the company, you know, what are the, what is the business plan? Are we selling a product service, a product and a service? We monetize in the patent. Who are the competitors?
Um, all these secondary considerations can help us possibly narrow in on certain portions of the claim set. Um, stuff of that nature. And then last, but definitely not least is, is who is the infringer? Um, when we're talking about. Crafting claims. It's all about, uh, about anticipating infringers and possible infringers.
Um, and so I think it's really important that, you know, if I was starting out all over again on that startup or whatever I was doing to study, you know, USC. Two 71 and ensure that you can define your infringer in there somewhere. Um, that that's, that's a tricky one. Um, and, and I put the, uh, Put U. S. 271A there, um, I mean, it's whoever makes, uses, offers to sell, or sells any patented invention within the United States or imports it into the United States.
That's really a simple phrase, but you got to make sure that not only can you find them there, but you can, can spot that infringement. And, and yeah, it's kind of leading into the next, next slide there, um, that identifying infringement. Um, I, I think it was in. A prior, uh, prior PSM, but if you can't, if you can't identify or spot the infringement, then what's the value of your path?
So that one's, that one's important, um, identifying if, you know, preferably we're going to design that claim for a direct infringement, um, you know, you can make indirect work. Um, and then making, making sure that we, I think a very overlooked or understated aspect is, is divided infringement. I know that to me, that was a pretty foreign term for a really long time.
And I don't, I don't know why that is. I think that that should be drilled into you very early. Um, I think it's a very important, important one. That's, you know,
Kristen: that's one that software brings to light quickly that other art units and other art. Areas don't, um, because usually you have to run it on a processor or a server or a client, and so it's very clear in the software that you want a single, single point of infringement, right?
Other, it just, it just isn't as clear in other areas. Um, the other piece about infringement and who are your infringers, um, also ask yourself as a last check after you've written claims, what would infringe this? It's. It's sometimes easy to write a very broad claim and be very proud of it. And if you read through it again with fresh eyes, maybe a day later, you can realize that, oops, I've just claimed a cooler with a lid, right?
And I meant to claim some other innovative product for, you know, storing XYZ. Um, so you have to be really careful to apply that lens after you've written claims to make sure they aren't too broad. Um, In a way that they aren't useful.
David: Yeah. Yeah. I'm really glad Ty you brought up that divided infringement that I totally agree with you.
It should be something that. Talked about, uh, I feel like more often, especially, you know, as you're getting started, um, exactly. I feel like it's a trap, right? Cause guys, Kristen and other people brought up earlier. You want to have that, uh, jury figure that figure that really shows the whole ecosystem of how the, where the invention fits, but you, a lot of times really don't want all of that ecosystem in the claim, um, because like, you know, if someone invents a brake pad for a car.
You want to, you want to protect the brake pad. You don't, you don't want a brake pad manufacturer to not infringe your claim because you're claiming a car. Right? So, yeah, it's a huge concept. I feel like that can get that can can be missed. Just for that, that motivation of explaining the invention and, and making it all fit together in an ecosystem, um, can be dangerous in claims.
Ty: Yeah, thanks for putting a example on that. That's in part of putting this together. It's like, it's, it's very hard to put any kind of general generalized examples because everything is every application is like a snowflake. It's all unique.
Kristen: It's also a good argument for a short preamble to your claims, to not fully define anything much in the preamble, unless you absolutely need it.
Ty: Um, yeah, and so drilling down a little bit deeper into that, because the first case study I had was on divided infringement, um, yeah, so it is defined as one or more, Actors collectively, uh, performing all the steps of the method or using, uh, disparate elements of a system claim or no, not one party directly infringes the path, um, in a recent federal circuit ruling, which Mistreatment.
I like this one. It's just kind of cut and dry for me to understand, um, divided infringement also cannot occur where the first party directs or controls the actions of the set of the other party, um, or, and where the first party and the other party form a joint enterprise. So principal agent relationship, um, a contract, et cetera.
So. I'll just kind of add a little bit to that. So, um, yeah, jumping into that example, um, looking at a, I like this, um, divided infringement case study, just because it was. Real, real simple, really easy to digest. But, um, TROP versus TravelSentry, um, a method of improving airline luggage inspection by a luggage screening entity, um, comprising, providing a luggage lock with an identifier that can be unlocked by a master key, marketing the lock to emphasize that it is subject to special screening.
The identifier signaling to a luggage screener that the lock can be opened with a master key and the luggage screener using a master key to open the luggage. So this was, um, if you guys are familiar, whenever the PSA approved blocks for luggage came out, um, that this method was, was covering a lot of that.
So in, um, TROPS patent application, uh, He, uh, had infringement from TravelSentry on the first three elements, um, and the fourth being provided by the TSA, or by TSA, uh, and it was not found that there was any, uh, principal agent or contract, anything where it is directed by TravelSentry for TSA to perform that fourth element of that method, and so for that reason, um, Um, the federal circuit reaffirmed that travel century had not infringed TROPS process pattern.
I thought that was just a real simple kind of cut and dry example of divided infringement. I like this infringement case. It was, um, Syngenta v. Willowood. Um, I liked it just because it was, uh, it had several examples of different types of, of patent claims. And it's all wrapped up in competition and business.
So I thought that was, that was pretty neat. Syngenta, um, which is a U. S. based company. Uh, Or at the time it was, it may be maybe different now, but sued Willowwood LLC in the U. S. District Court for patent infringement. Willowwood was composed of Three different entities. Uh, it had two U. S. based entities and a China based, or no, I'm sorry, Hong Kong based company.
Um, the Hong Kong based Willowwood contract manufacturer of the Zoxostrobin, which is a fungicide, uh, that Syngenta had patents on the Compound or composition and method of producing. Um, and they would sell the fungicide into the U. S. through Willowood USA. It's Oregon based, um, affiliate who would then contract third parties to formulate a Zoxy strobe and into the generic in use.
Fungicide products. So a lot going on there. We'll look at the four patents that were asserted by Syngenta against Willowood. Um, and I, I was hoping to put the actual claims here, but I dug way too deep into this one before I realized how monstrous the, uh, The claims were, um, being chemical in nature.
They're, yeah, they're, they're monsters. But to boil it down simply, the, the first two patents, um, which would be referred to as the 076 and the 256 patent were composition patents for the, for compounds, including a Zoxistrobin. The third patent was the 138 patent was a method patent, two step process, um, including ethification to form an intermediate compound then used in a condensation step to produce the azoxystrobin.
And then the 761 patent, method patent, um, for the processes for the preparation of azoxystrobin using DABCO, um, diazobicyclooctane,
I don't know if I got that, I got, maybe close, uh, as a catalyst and a novel intermediate. Used in the process. Um, and then what really the hinging element of that patent was producing a Zoxy strobin under the presence of between 0. 1 and 2 mole percents of the DAPCO. So with those four, pretty cool. They broke down the case study into kind of, you know, the result of each.
Um, on the 0. 76 and the 2. 56 composition patents. Um, they were found to be directly, um, and inducibly infringed by Willowwood, USA, but not Willowwood, China. And, and to be honest here, it actually came down to like five kilograms shipment of Azoxystrobin, um, that was, uh, admittedly imported into the U. S. But, to me...
Oh,
Ashley: I'm sorry. The infringement was because... Willowood USA was because those 2 patents were directed for the composition of the drug, the fungicide. It's because Willowwood USA was the 1 receiving the import or, like, causing the import to happen. Right and so that's why it was the Willowwood.
Ty: That's what I believe and there was a lot of discussion and I felt like just like you put it.
I felt like it could be broke down to that exactly 271 whoever imports 271 doesn't have any language as far as who's exporting so they really were trying to go after china willowwood china, but They only had a case on Willow wood, u s A for importing that five kilogram shipment. Interesting. There was even mention of some interesting, they, they put d o b um, China on the, the shipping to where the ownership actually transferred overseas.
There, there was a lot going on there. There was . So I, like I said, I wish they would've just boiled it down and said, Hey, here was the importer, here was the exporter, but. I believe that's what it was. That, that's how I
Porter: read it is there's like the, the Chinese counterpart that manufactured the, the product and then, um, and then the American, uh, part that, uh, they, they received title over, like on the seas whenever it was shipped.
Um, and, and that was the, the, the 138 patent was a, uh, product by process. Um, as a, uh, uh, in front of the claim that the claimed infringement was a, uh, product by process and, uh, and so that's where this case, how I read it is, uh, a little tricky with all the talk of copyright and, and kind of the patent stuff scattered throughout, but, but yeah, how 271 G talks about how, uh, uh, it, it does like whoever, you know, it doesn't matter, um, The Chinese counterpart manufactured the product by this process.
It's who brings it in. And if, if that product was manufactured by that process.
Ty: Yeah. Yeah. And so perfect transition into the one three. So that method, it was the method patent, two step ethification, um, for that intermediate for the condensation step to produce the Zoxistrobin. Um, in district court, they, Willowood was actually, the jury, um, ruled in favor of Willowwood, uh, because Willowwood had said that their contractor, uh, had not performed both steps.
Um, I believe it was the. Maybe the ethification, but anyways, uh, jury ruled in favor of Willowood, uh, but was later reversed by the federal circuit. And this is a really interesting, um, bit on 271 G, uh, being that whoever, you know, without authority imports into the United States, they made the argument that the liability arises from practicing, but not from practicing the, the patented process abroad.
But only acts with respect to the products resulting from the patented process. So the liability of the infringement occurred at the point of importation. And I'm hoping I'm getting that right. That's why I was kind of sending that to everybody. But not that there was two entities in China performing.
But once that product by process was then imported, that was the point of infringement.
Ashley: Yeah, I mean, I think there's been some stretch of that. There was a recent case. Where someone's going to have to help me out here. If you can recall, there's been something because in John, I think it's, you know, you have to be within the U.
S. borders, right? Because it's a U. S. patent. But there has been some stretch of that recently, at least in the biotech space where there was something where. For damages or something, they were allowed to recoup damages for some activities abroad for the infringement that happened US side. And I remember there was some concern from some of the X.
I can't like, my brain is foggy into what case it was, but there was some concern from certain judges that, you know, you're kind of extending the US's reach by basically allowing for recoup of damages for activities that were part of the infringement puzzle, but were actually performed abroad. Okay. And I don't know if anybody can help me out on what that 1 was, but there was a case recently that kind of had some issues around extending it.
Maybe a little bit too much outside the US, but but here I wasn't imported. And then. Wasn't it then converted to a Zoxistrobin here though? Wasn't it some pre No,
Ty: it was a Zoxistrobin that was imported.
Ashley: Okay. Then what, then what was the thing that was done here that was to make it into the, like the more liquid fungicide or something like that?
Ty: The end use products. Yeah. It was just. Yeah. That is
Ashley: interesting. Cause they do, I wonder it depends on how their corporate structure is set up with that Hong Kong one versus this and that being. They're not joint enterprise, maybe in some fashion, and they didn't direct one another technically, maybe they were trying to skirt it that way, but it fully appreciated.
I don't know. It's interesting.
Ty: This 1
Porter: tricked me up for a while because, uh, I, I was, I was over, I think I was just over complicating it because the statute just says, I think the main part is in 271 G. It says whoever without authority imports. You know, blah blah, blah, blah, blah, blah. And, and the, and the key part is that, that, that whoever imports, and then the, the, a product, which is made by a process, um, process patented in the United States shall be liable as an infringer, so it's like the, the.
The way that I saw the, uh, the, the Chinese or the, uh, yeah, I guess Chinese entities is, is that they, it was unclear if, uh, to some degree, if, if the, uh, the product was made by a process patented in the United States. But, um, but since the American company was the one that imported it, that absolved the Chinese entity.
Of any liability because it was just the American company that imported it and then offered it to sale or use the patented pro or, you know, uh, one of those conditions, uh, of the product that was made by the process. And so it's, it. It's, the statutory language is a little murky, especially when, you know, in 271, you've got A through I in there, and each one is a little different.
The scope of protection of each one of those, uh, you know, the subcomponents of that statute, it's like, okay, you've got to scratch your head and like, really look at the language. Um, but, but yeah, after, after I looked at it for a little bit, I was like, oh, I'm, this makes perfect sense. This, this, this, uh, this opinion to me, at least, I, I thought it was a good, I thought it was a good reverse and remand and affirmation.
Ty: See, that's, that's funny. And it kind of, I hadn't thought of this, but uh, till just now, As far as when the Federal Circuit picked it up, the case had, they, you can kind of imagine that Wilwood probably conceded that yes, our contractor did the ethification or the compensation step, whichever one. But somebody else did the, the ethification or the condensation.
So they probably, they, you know, you can almost see where maybe they conceded that, and then once they read it against 271G, once the Federal Circuit did, then boom, you had it. It was product by that process. Right.
Porter: And that was, that was the, the, uh, I guess the defendants here, that was their whole defense was, was, Hey, Hey, Hey, 271 G requires one entity to, to, to do all the process steps and bring that product in.
Well, you know, even if they did all of that, even if it is, uh, uh, a product made by a patented process, you know, they did it. We didn't. So we're not, we're not Because 271 G requires one entity to perform all those steps. But that, that to me is this, the really significant part of this case is they're saying they're clarifying 271 G saying, no, you, it, you know, if there's a relationship, uh, between the companies and, you know, if, if, if X, Y, and Z are all hit and you bring that product by process in, uh, they, they could be, they could be liable too.
We're not just looking at one entity. I thought that was kind of cool.
Ty: Interesting. Yeah, I think that, uh, 138 was, was the, the most interesting one, um, of the four. Um, the 761 patent, which was once again method patent, uh, uh, producing that, that the Xoxy strobin in question using DABCO, um, Wilwood successfully shifted the burden of proof.
Or, I mean, I'm sorry, Syngenta successfully shifted the burden of proof to Wilwood to prove that they didn't, uh, Wilwood was unable to, which to me means they probably did it. That's my opinion, but, uh, and they were, they were found to have infringed 761 as well. Um, the other little interesting tidbit on this was the damages for infringing, um, 761 were like.
More than a factor of 10 larger than the, the damages for infringing the composition patents, which I, that's above my pay grade, but I wish I could understand where that comes from. I mean, I think
Ashley: it's a pretty complex calculation. I mean, I don't know. It's a pretty complex calculation about how you determine damages.
Right? And it's. You know how you're trying to determine how much damage a company suffered so that's lost sales and lost revenue and that's, you know, I mean, layers deep of harm done to, you know, in this case, the, um, the movement. Right. So, um, yeah,
Kristen: sometimes it's as simple as the method claims are more valuable.
And the loss was worse than the composition claim itself, you know,
Ashley: if you're using it, I don't know where a Zoxy strobe and is used, but who knows if it's well beyond just whatever Syngenta does. Right. You know, they might who knows if they have licensing agreements out there and all sorts of tentacles that, you know, now it's.
They're suffering a lot more loss for that one. I don't know
Porter: the damages or whatever your expert witnesses says It's it's
Ty: muddy Can be I guess very interesting. Yeah, I thought I thought that one was kind of a interesting one We got to look at a few different kind of the the spiderweb that you can you can build with a portfolio And Syngenta did a good job there But with that, that kind of sort of takes us to a wrap up.
Um, yeah, I guess takeaways as a practitioner, I just kind of threw this slide in at the end, but just, you know, thinking of claim drafting and in the spec. Um, you know, being paramount. So one of the first steps, um, that, you know, we do it at Aurora. And I think that ensures that you're on the same, um, page as the client as to what the invention is, uh, what also is a by product, what is the prior art?
Um, and what's, what's being, you know, what's being invented. Therefore you can, you can, uh, form the proper support in your specification and in the figures. And it also kind of gives you an opportunity to, to brainstorm that strategy, because I think as, as practitioners, a lot of the value we can bring is, is seeing those hidden doors, those design arounds, um, kind of, you know, what we spoke to earlier.
Um, I, I, yeah, I feel like that's where we can, we can bring value. I like it. Cool. Well, I put in the last, last slide. I was, I was hoping that David would be here, but, um, as a summary or a conclusion, conclusion quote, um, 90% of the mental exercise in drafting patents is in the strategy of looking around the corners and anticipating the future and trying to capture as many would be infringers as possible.
That's brought to us by David Co. . I thought that was a, a good wrap up.
Ashley: Might be a little light.
Kristen: 90 percent might be light. Yeah.
Ashley: Yeah. You got at least some time for drafting. I suppose. That was good. Yeah,
Ty: thank you. Thank you guys. .
Ashley: Um, yeah, let me know if you guys have any questions or otherwise, I think we'll probably strike through the porn part in the beginning, but other than that, thank you.
Thank you very much. This is great. Thanks for joining Maria . Hope you guys will come again soon.
Ty: Absolutely.
Porter: Thanks for inviting me. Thank you. All right. Bye, guys. Bye bye.
Josh: All right. That's all for today, folks. Thanks for listening, and remember to check us out at aurorapatents. com for more great podcasts, blogs, and videos covering all things patent strategy.
And if you're an agent or attorney and would like to be part of the discussion or an inventor with a topic you'd like to hear discussed, email us at podcast at aurorapatents. com. Do remember that this podcast does not constitute legal advice, and until next time, keep calm and patent on.
