Patently Strategic - Patent Strategy for Startups
Patently Strategic - Patent Strategy for Startups
Claim Construction: Building Strong Patent Foundations
Claim construction is a process in which courts attempt to interpret the meaning and scope of the claims of a patent. It’s like reconstructing what an inventor and their practitioner meant back when they drafted the patent application. While your patent might not be tested in a court for many years, understanding the sometimes surprising language specifics and context traps while drafting now can help set you up for success later when defending your patent or attempting to stop an infringer. The words you choose now and the support you provide when drafting are your opportunity to help derisk the process of courts and juries later interpreting what you meant. And oftentimes, claim construction can be the KEY FACTOR in resolving disputes even before litigation, with the facts that come out of claim construction deciding the monetary value and payouts in settlements.
Kristen Hansen, Patent Strategy Specialist at Aurora, leads the discussion along with our all-star patent panel, exploring:
⦿ The evolution of claim terms
⦿ Claim construction basics and a historical look at what are called Markman hearings
⦿ Intrinsic evidence vs. extrinsic evidence
⦿ Claim construction in prosecution vs. litigation
Kristen is also joined today by our always exceptional group of IP experts including:
⦿ Dr. Ashley Sloat, President and Director of Patent Strategy at Aurora
⦿ Dr. David Jackrel, President of Jackrel Consulting
⦿ Dr. David Cohen, Principal at Cohen Sciences
⦿ Steve Stupp, Partner at Stupp Associates, LLC
⦿ Ty Davis, Patent Strategy Associate at Aurora
⦿ Arman Khosraviani, Patent Agent and Former US Patent Examiner
** Mossoff Minute **
This month's Mossoff Minute, Professor Adam Mossoff discusses recently proposed regulations that would misapply Bayh-Dole provisions to impose march-in rights on patent-protected innovations and create price controls via compulsory licensing. This amounts to government seizure of private property and will do tremendous harm – especially to the life sciences – if implemented.
** Going Deeper **
⦿ Patent Claim Basics and Strategies
⦿ Patent Anatomy Guide
** Follow Aurora Patents **
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Thanks for listening!
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Note: The contents of this podcast do not constitute legal advice.
[00:00:00] Ashley: Good 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 is for inventors, founders, and IP professionals alike, established or aspiring.
And in today's episode, we're officially kicking off our fourth season. It's going to be another big year for patents, and we couldn't be more excited about the lineup we're bringing you, including more great and inspiring inventor stories. Starting in February, we will do an interview with James Howard, executive director of the Black Inventors Hall of Fame, and later in the year, Multi Wedge founder Robert Cameron, who will talk about his incredibly wild self-bootstrapped success story.
Since no industry is immune to its reach, including ours, will also be taking an in-depth look at A.I implications for patenting. Whether or not AI may terminate or even [00:01:00] save the patent system. In continuing with the roots of this podcast, we'll be doing further exploration on the nuts and bolts of patenting, including deeper dives on claim strategies and exploration of the fundamentals of dealing with rejection during prosecution, and why continuations are one of the most important things future self will thank you for doing. We've also started recording for a series we're very excited about that will explore strategies for future proofing patents. This multi-part series will detail strategies for crafting quality patents that will increase your odds of success if faced with the PTAB, or should you need to leverage the ITC to block the import of infringing inventions.
And of course, we will continue to bring you expert interviews with key players in patent reform and cover any significant legislative movements around bills like PERA and PREVAIL. But first, in this month's episode, we're continuing our exploration of claims. This is part two of an important three-part series and picks up from our Season three episode on claim strategies, [00:02:00] which goes from claim basics all the way to effectively leveraging claim strategies.
If you haven't listened to that one yet, or if any of this gets a little thick, I highly recommend you go back and give it a listen. There is not a more important concept to grasp. In all of patenting claims, define the boundaries of your intellectual property. The highly nuanced process that goes into crafting them is all the difference between a defensible assertable valuable property right, and an expensive vanity piece for your wall.
In this month's episode, Kristen Hansen, patent Strategy Specialist and creative claim construction worker here at Aurora leaves a discussion along with our all-star patent panel delving into the world of claim construction. Claim construction is a process in which the courts attempt to interpret the meaning and scope of the claims of a patent.
It's sort of like reverse engineering or maybe more accurately reconstructing what an inventor and their practitioner meant way back when they drafted the patent application. While your patent might not be tested in a court for many [00:03:00]years, understanding the sometimes surprising language specifics and context traps while drafting now can help set you up for success later when defending your patent or attempting to stop an infringer.
The words you choose now and the support you provide when drafting are your opportunity to help de-risk the process the courts and juries later use to interpret what you meant. And oftentimes, claim construction can be the key factor in resolving disputes even before litigation with the facts that come out of claim construction, deciding the monetary value and payouts in settlements In breaking this all down, Kristin and the panel discuss the evolution of claim terms, claim construction basics, and a historical look at our called Markman hearings, intrinsic evidence versus extrinsic evidence.
Claim construction in prosecution versus litigation Prison does a great job of providing helpful 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 [00:04:00] anyone out there who would like to get a better understanding of their various parts of a patent application, including the claims, the specification, and how these things all tie together, I highly recommend you check out our exceptional episode from season one on Patent Anatomy or the responding guide we recently published.
We'll link to both of those in the show notes. Kristen is joined by our always exceptional group of IP experts, including yours, truly, president and director of patent Strategy here at Aurora Dr.. David Jackroll, president of Jackroll Consulting. Dr. David Cohen, principal at Cohen Sciences. Steve Stepp, partner at Stepp Associates.
LLC. Ty Davis Patent Strategy Associate at Aurora. And Arman Khosrabini patent agent and former U.S patent Examiner. And finally, before jumping in with the panel, we'd like to take you to the next installment of the Masoff Minute, a monthly segment that builds on our Patent Wars episode and features short conversations with Professor Adam Masoff, providing updates and quick takes on movements in patent reform, [00:05:00] significant court rulings, innovation policy happenings, and the occasional star Wars references.
In this month's minute, Adam discusses recently proposed regulations that would mis-supply Bayh-Dole provisions to impose margin rights on patent-protected innovations, and create price controls via compulsory licensing. This amounts to government seizure of private property that will do tremendous harm, especially to the life sciences if implemented.
[00:05:26] Adam Mossoff: The big news in the innovation industries today is the Biden administration's announcement that it intends to impose price controls on patented products and services sold in the marketplace. Of course, the Biden administration does not use the word price controls. Instead, it says that it will merely license.
To other competing companies, the ability to make and sell these patented products and services at a lower price, effectively imposing through government action price controls on the sale of these products and services in the marketplace. That is actually the purpose of the new regulations under a [00:06:00] law known as the Bayh-Dole Act.
The Bayh-Dole Act was a law enacted by Congress in 1980 that made it clear that any researcher at a university or other research institution that happened to receive public funding could still obtain a patent. It's been responsible for the explosion in startups and in licensing by universities over the past 30 or 40 years, and is often recognized as one of the most significant pieces of legislation Congress has enacted in the past 50 years.
The Bayh-Dole Act never identifies the fact that price is a legitimate trigger for these licenses that may be issued by the federal government. The Bayh-Dole Act never once uses the word price. The action by the Biden administration is not supported by the law. And in fact, Senators Bayh and Senators Dole explicitly said 20 years ago that the purpose of their law was not to lower prices.
And in fact, over the past 30 years through bipartisan administrations, agencies have consistently rejected this interpretation of the Bayh-Dole [00:07:00] Act as a power to impose price controls in the marketplace. More to be seen soon.
[00:07:06] Ashley: We're also publishing clips from the Maslow 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 construction. Take it away, Kristen.
[00:07:23] Kristen: Today we're going to talk about valuable lessons in claim construction. Um, this is something that's kind of interesting. Uh, I think it's a good topic for inventors to be aware of, uh, to make sure that they properly detail invention specifics like sizes or lengths or proportions, or that when they're using relative terms in their IDFs or their descriptions to us, that they, they define what they mean by that.
If they mean slightly above, slightly below, what does that mean? And, and can I get some exactness so that I can put that in the specification? Uh, I also think it's a really good topic for practitioners who may not have a lot of litigation [00:08:00] experience or exposure. This kind of, uh, topic pushes prosecution practitioners to think about exactly why claims and specs are to be drafted a certain way and why we follow the rules we follow, um, and, and what that means to protect the rights of inventors and companies during prosecution because.
That can come up in prosecution, but also to protect them later if litigation were to arise. Those sorts of things. Um, it's really important to have a clean, clear claim and specification and to have a practitioner who knows that and who is paying attention to that as they draft, that's huge. So some of these things, uh, we can do if we're aware of them and others.
It's like, it's a practice. We are practicing law here. We are learning to do this. Um, even at, you know, 20 years in, you still learn something new every day. So if I know about it, I can fix it. So in that vein, uh, I'm going to go [00:09:00]through the evolution of claim terms here. Claim construction itself and then considering claims, uh, in prosecution versus in litigation.
And we'll look at a couple of presidential cases so we can see how it's used and those are in prosecution, so those should be more useful to this crowd. Um, and I think inventors would find that interesting to see how it's used, but to see why the language is so important and specific. Um, and, and they might be a little surprised because even we are surprised when we hear back from examiners on, um, having to clarify something or having to respond to a one-twelve rejection where it seems very clear because you drafted it, but when someone else read it, they assumed five other things.
So, claim drafting and the evolution of claim terms. Now recall that claims actually define the invention to which a patentee is entitled, the right to exclude others from making or using their invention. And as practitioners, we do attempt to achieve like a delicate balance of clarity, breadth, and [00:10:00] flexibility here.
Right. The actual claim language itself has some really distinct and, and different vocabularies. We use plain English and the examining core that's examining our applications and the courts themselves and the jury are, they tend to be comfortable with plain English. Um, so we don't have to worry too much about that other than to make it, you know, appropriate for what we're writing.
Um, the second language is basically a scientific vocabulary or a technical jargon, and that's related to the underlying science and the jury and the courts may need some help with that. Right. And the third is actually the claim drafting conventions. And that's things like comprising, um, wherein, uh, the fact that you have a preamble and a body of your claim.
So things like that and the familiarity with that, that's something that the court's jury might also need some help with, um, in a. A case that [00:11:00] they're looking at claim construction, right? So the people actually involved in claim terms. I think a lot of people would find this surprising. But if you think about it, it, it rings very true.
You have the inventor, you have the patent prosecutor and the drafter, and you also have the patent examiner. Patent examiner gets involved and cares about what the language says because they want it to be valid and they want it to not be anticipated or obvious or indefinite, and they want it to be adequately described.
So often you'll be prosecuting something and you'll have an examiner say, this term needs to clarify. Now it needs to be clarified to this clause because it needs to be clear what you're doing with this term. Right. And sometimes as a a prosecutor, you just do it. You say, okay. It doesn't seem to hurt the claim.
Um, it's going to get me over a one-twelve rejection or a, a prior art rejection. I'll just do it. And sometimes you have to push back because it makes your claim completely useless or way too narrow [00:12:00] or even more unclear to the art in which you're trying to overcome. Um, so it, it's, what I'm trying to say, I guess, is it's the gamut of examiners that you get and some are extremely picky and want things done exactly the way they say, um, even when they're wrong.
And, and that's, that's just something you have to deal with. So what happens is you get a claim in the end, in your application and in your, your final allowed and issued patent. It has a few different claim terms that even you, the drafter may find a little bit quirky and not quite dead on, and the inventor might see that as well and think the same.
So. From an inventor's standpoint, understand that it's not just our language, it's often a patent examiner or a patent examiner's supervisor who is, is in there mucking with the language. Okay, so what is claim construction? Claim Construction itself is not like drafting the claim itself and constructing [00:13:00] the claim from scratch.
Okay. Claim construction is actually the process in which the courts interpret a meaning and a scope of the claims of a patent. And that's important because if you have courts and even the PTAB, so the, the, um, Patent trial and Appeals board, with the Patent office itself looking at claim construction and assessing claims and looking at the scope of claims, you have to be able to either back up what you intended by describing it well in your specification or proving in a litigation court what you meant and why it's clear and, and not ob and obvious what you meant.
It's really important in a litigation, but it's really important to get right in a prosecution history as well, because a prosecution history later can be held against you in a litigation trial. Okay? So it stands to reason that if you accuse a party of stealing your idea, [00:14:00] you'll actually be required to prove that patent infringement has occurred.
Okay? And patent infringement can have, it can be direct patent infringement, or it could be indirect patent infringement. Um, direct patent infringement actually means that somebody is actually making, using, selling or trying to sell or importing something without obtaining a license from the actual patent holder.
And then there's something called indirect patent infringement. And that involves the person or a company that contributes to an infringement caused by a third party. And this third party would be the one who's directly infringing. And this other indirect party would be somebody who's causing the third party to infringe.
Um, so by supplying parts or instructions, that sort of thing. So you can be sued on both, on both sides and claim construction will come in on both sides. Um, and it's important to both sides to get it right unless you know you're the one suing and you're wrong, but you want them to get it wrong so that you get more money.
But it's not a good thing. [00:15:00] So sometimes claim construction actually is the key factor in resolving these disputes too. Sometimes you don't even go to the litigation case itself and the actual claim construction and the facts that come out of that are used in order to. Decide monetary value and monetary payout and then you would settle.
Lemme ask
[00:15:26] Ty: if I may, I, I didn't realize that claim construction was a term that really was, had to do with the court. That, but you, you're saying it really is confined to when you're talking about litigation or how the
[00:15:41] Kristen: courts interpret? Yeah, that is partially right. And it comes from the litigation side and, and they do claim construction on cases so that they have clear facts and clear claim, um, definitions.
But it is applied backward in prosecution because any examiner [00:16:00] and any PTAB decision. Or the ITC courts, right? These, these bodies can actually use case law of claim construction against you if you've done it the same way in these cases, or if you've done it not in a good way that these cases say you should construct your, or that you should, um, lay out your claim.
So even though it's technically not going to be constructed in prosecution, it's going to be assessed based on a court case that did have claim construction. And so it's, it's, it's a different lens, right? So in the courts, you're actually not looking at the person of, um, ordinary skill in the art, right?
In the courts, you tend to look at experts, you tend to look at a lot different, um, ranges. In the patent office, you look at a person having ordinary skill in the art. [00:17:00] So the lens is different, but the idea is the same and the conclusion from a claim construction that occurred in a court case at the PTAB or in a litigation or anywhere, right?
That can be used against you during prosecution of your application. Okay? But that, that's the clarity. Um, it's not ever going to be a process that occurs in prosecution. So it really is a litigation thing. But there are so many subtleties with claim drafting and putting together your specification that if you run into these things, if they're like buzz saws, right?
You can actually have invalidated patents pop up. You can, you can not get a patent because you can't overcome the art because you didn't have enough clarity and description in your, your specification to change your claim to the right term to make it clear and concise and, and novel. Okay. Thank you.
Yeah, yeah, no problem. Okay, so claim construction [00:18:00] usually has two steps. It's, it's a patent claim that is made that explains the product method use and makeup. So you, you identify what patent claim you're going to construe and you do an infringement analysis to determine whether or not the claims have been violated and that infringement analysis and that patent claim definition.
So both steps actually define certain terms that are going to be construed. So it's not just the entire claim or just the entire infringement analysis, it's pieces and parts of that claim that are going to be analyzed. And that analysis can actually overlap into infringement analysis and in validity analysis too.
Okay. So why is it important? So it really does provide a reconstruction of the claims into more understandable terms. Um. Often there are terms that are very clear in the technical art that they're used in, but they also saddle three [00:19:00]or four other technical spaces or non-technical spaces. Um, so to have a reconstruction of the claim in more understandable terms will help a jury, a judge, and it will also help an examiner who is looking at a court case that had all of this construed because they will understand how it was broken apart and reconstructed, and they will be able to apply that to your patent claims in prosecution.
Now, unfortunately, they're looking to apply it to reject you, but if they can make a parallel, they can use the case and they can reject you. So it makes it a little bit harder to argue, um, and, and sometimes it doesn't. Sometimes it just means, okay, I'm going to change this claim term to something more clear and that actually means.
What I intended it to mean without this ambiguity. So claim construction can also provide a way to assess when claims are too narrow, and that means when claims are too specific to the [00:20:00] infringed. So often in that infringement analysis and, and identifying which, which terms are going to be construed, they can also make some sort of assessment that this is extremely narrow in view of what's going on because they're looking at infringement and they can say, there's no way somebody would infringe something this narrow because look at what this guy who's been accused of infringing is actually doing, and that does not go to this level.
Right. They could go the other way too, and they could assess when claims are too broad, which means it's impossible to claim, you know, the, the entire invention for themselves. So like a good example of that would be. I'm claiming a medical tool that does something, and if it were construed, it would probably force me as the patent owner to either lose my rights because it's too broad or to redefine something in anything I go [00:21:00] moving that I, that I file moving forward.
Instead of a medical tool, I would maybe say a catheter, because it's really a catheter, it's not a medical tool. A medical tool involves many, many, many things, and it's too broad a term.
So it, it seems
[00:21:17] Ty: like some of this could, could be handled in the spec, right? Yeah. I mean, if you realize you're using really technical, um, language, there's nothing to be lost by explaining it in plain English,
[00:21:33] Kristen: right. I. Very true. Yes. Okay. And, and the spec will be used in a claim construction. So it is part of the evidence.
There is no problem with that. Um, I think the only, the best
[00:21:46] Ashley: I was gonna say, I think the only thing that could be lost
[00:21:48] Kristen: is if you, if you think
[00:21:50] Ashley: you, if you think you deserve the broader term, making sure you describe it in several different narrower variations to prove [00:22:00] that you deserve the breadth that you are claiming that you deserve.
You know, so that's where, I mean, if you wanna be specific or if you need to be specific, make sure you're specific in multiple
[00:22:09] Kristen: verticals. Yeah, good point. So claim construction is also important because it can help with infringement and validity analysis. And those two things are very important in a litigation case.
Um, they just are, they're, I, I won't go into the details of all of that. It's involves claim charts and all kinds of, of evidence, but. The other reason that claim construction is important is it can be used for valuation decisions. So like unenforceability enablement and remedies. Um, remedies. If, if you aren't aware of that, that's like injunctions, monetary damages or attorney fees.
So somebody can use a determined claim construction and what happens is the other side. That is maybe suing says, oh, I'm going to lose this case because the way these [00:23:00] claims were construed, um, it, the evidence is it's highly likely I'm going to lose this case, so let's settle. Right? And then these, these valuation decisions can come out of that.
So it can be important and it can shut down a litigation pretty quickly. So claim construction is decided in opposition during examination of a patent. So this, I covered the court side of it, but it can also happen in opposition where you have a third party saying, Hey, you know, I don't think you can have the patent that you have because you're infringing what I'm doing.
I'm opposing that you get, that, you even get to have a patent. Um, it can be determined in examination of a patent when required. So. When I say determined, I don't mean they actually do a claim construction and they give it to you as like a claim construction document. This is an examiner who uses known court cases against you and these known court cases had to do with, or they hinged on claim construction ideas.
Okay. Um, it's [00:24:00] also used in the Fed Circuit and the ITC courts pretty regularly. Um, all the way up to the Supreme Court. Supreme Court has, has heard cases on, um, claim construction. And then this is what I was getting at. It's used with a slightly different angle at the P-tab and it's in the examining court.
Um, you know, they can use these cases precedential informative or or otherwise. And if you have any kind of commonality for how you maybe screwed up drafting a claim, they can use that case against you if it's similar enough. Um. And it, it becomes a little bit more difficult to overcome and, and move to a patent.
So, and like I said before this, this can be a really the main determinant for assessing whether a defendant is guilty of stealing an idea or a design. This is something where if they've construed claim terms a certain way, it, it becomes very clear whether or not somebody has infringed or not, because you have the [00:25:00] clarity of language and you have what the infringer did.
And that becomes a very direct comparison, rather than comparing what the infringer, the alleged infringer did against this really complex, ridiculous, you know, 10 clauseses of a claim. So when you can break it down to this kind of detail, it, it becomes a lot more clear. So in order for a court to actually determine that this, that a patented idea was illegally taken or used for profit, they do actually pass a small muster of rules.
And it has to be something that, you know, that your patent was written in a way that an ordinary person can understand. It has to cover what the inventor wanted and create, create, wanted to create and what was actually created. So some of that is covered in best mode. So your requirement is to describe the best mode.
And by the way, your requirement is not to just to tell anyone what your best mode is. It is [00:26:00] only that the best mode be described in that document, right in your patent application. So if anybody would ever read anything I've written, I will never use the term invention. I will never use the term preferred embodiment, um, anything like that because I don't want ever to tell anybody what the best mode is.
Because I don't want that used against me. That is, that can create a stopple if I say it in a office action response and it can create just block if I say it in a specification because now whoever is using that against me actually knows what my supposed best mode is, and they say, well, this is what you really intended it for, and it's just a stronger argument for them to come after me and say, well, this is what you intended it for.
I know you have these other five examples, but you said this is a preferred embodiment, so this is what I'm going to believe you invented. [00:27:00] Right? Instead of what you actually invented is what's in the claims very clearly. And, you know, the, the, the spec is taken into consideration, but what you get is the claimed subject matter.
So if I didn't claim to the level that I have in the specification, but I've said preferred embodiment, they're going to go back to the specification and read that claim into that preferred embodiment. Right. And I, I, I say they're going to, I'm saying they can or they could, and that is something I just like to get rid of and just not deal with.
Um, it's just another way of blocking a competitor or, um, somebody who's looking to go after your patent. Kristin,
[00:27:40] David: I had a, I had a quick question on that. The mm-Hmm. When you say be written in a way that an ordinary person can understand, do you, I mean, what would your recommendation be? Is that a person of ordinary skill in the art, how we usually think about it?
Or is that ordinary person, your average person on the
[00:27:57] Kristen: jury? So I believe [00:28:00] that is. On the, and that is because there has to be portions of that specification that have to be understandable at that level. But the claim and the content that is looked at from the claim is a faceta, right? That does not have to be an ordinary person that is technical, legal language for a reason.
It's pieces of when, when I say be written in a way that an ordinary person can understand. This is talking about specific claim terms in that claim. So you don't wanna use non-swords and legal jargon and strange things that make the actual claim unclear. Yeah,
[00:28:45] David: sure. That makes sense. I was kind of thinking about something you said earlier, how there are technical terms, right, of course.
In, yeah. Most claims, and I've always sort of heard, been coached that shorter claims are more [00:29:00] valuable, can almost do a word count and uh, sort of a sign of value. And so a lot of times I feel like, um, there's a motivation when you're thinking that way to use a technical term to do a lot of heavy lifting, you know what I mean?
Rather than really spell something out and, and use more words and then. Arguably, at least, you know, make the claim less valuable.
[00:29:22] Kristen: Right, right. And put another way, instead of stacking adjectives before a term, use the technical term because the stack adjectives or the longer claim itself, what is that going to get you?
Now you have to find something that's adjective one, adjective two, adjective three, and the term. mm-Hmm. It might be harder to, to find in the prior art, but it doesn't make your invention any better generally. It's just Okay. Yeah. Descriptions of the main technical term. And so just use the technical term.
[00:29:53] David: Right. And it may not make it more easily understood anyway. You have to have the technical terms. So, [00:30:00] um, yeah, that makes sense. Okay.
[00:30:01] Kristen: Yeah, thanks. Okay. No, good add, good add. Um, so claim constructions usually have preliminaries too. This is not something where we just dive in. Every case has a claim.
Construction, we have to do it. There is a couple things where. They actually decide, are there any terms in here that even require construction? Do we even need to do this? And if both sides come to an agreement that there really are not any terms that need this construction, this whole step can be skipped.
Um, and there are some cases where, um, or some judges, some, some courts who say, listen, if you're gonna do a claim construction, we're going to limit you to 10, 10 terms and you can pick 10 terms that you can't pick more than that. And for me, I think that's about time and, uh, actual ability of the courts to make those decisions without redefining the entire [00:31:00] claim itself.
Right. You could, if you had 50 claim terms, you might be able to redefine the whole claim. You determine whether construction even needs to be had. And then you establish some rules for interpreting the claims. And this is where you establish, you know, the facet of the person having ordinary skill in the art and what level of skill that facet is.
Um, in this state, you can also clarify unclear claim terms. So this is a clarification, not a construction. So if there is an antecedent basis issue or there is something, um, something that could be just a little bit more clear but doesn't change the meaning of the claim, you can do that at this step. And then both sides tend to either draft and or review claim charts of the claim itself against the art or against whatever they're arguing, um, to become familiar with other facts of the case.
And all of this happens really, it's, it's preliminary, it's outside of court. It's, it's not really something that a jury would [00:32:00] be looking at. Um. It's just preliminaries. So before, so after the preliminaries, you can actually hold a Markman hearing and the Markman hearing is actually the formal interpretation of the claim construction.
So the Markman hearing itself will be what, what does the claim construction and what comes out of the Markman hearing is the claim construction. Okay, so the claim construction and the evidence and, and the basically the layout of how the case is going to go. And what's interesting about Markman is it, it has some historical significance because in the eighties there was an issue that came up of whether the judge or the jury should construe patent term claim because they are very technical.
Um, so until 1996, it was actually common in jury trials for the court to include claim construction as part of the jury's charge, which sounds really scary and awful. [00:33:00] Um, so as you can imagine, resolving this scope of patent claims with a jury would really increase the complexity, but also the uncertainty of how your trial's going to go.
Um, you know, you could, we all know that, that we listen to technical information day in and day out. You've probably tuned out 10 times since you started this talk with me. It's just natural. You just, you, you pay attention for 30 seconds. You lose it for five, you pay attention for five minutes, you lose it for two you's.
Just how the human head works and if you've got a jury who misses, you know, a lot of information and a lot of technical information, you know, how can they properly construe claim terms with only a part of the knowledge, right. It just, it becomes very difficult. Um, and lawyers and agents and people in the legal field and judges just are more apt to force the focus and force the concentration to get the actual task completed [00:34:00] appropriately.
And it's, I think it's because we're just used to it. We've had to do it. We've trained ourselves to do it. Basically in Markman, um, Markman was, uh, to give you that background, Markman was actually a case. So it was a Markman versus Westview Instruments, and that's where the term Markman hearing is derived.
So it was a Supreme Court case, and it actually goes like this. Just, just so you all know, I don't know if this is of interest, but I'll tell you because you know, you'll, you hear it all the time. Um, in this case, Markman sued Westview Instruments for infringement of its patent on a system for tracking articles of clothing in a dry cleaning operation.
Now, after a jury found actual infringement, Westview Instruments moved for summary judgment as a matter of law on the ground that the patent and its prosecution history made very clear that the patent claims at issue did not extend to the defendant's accused device. So the prosecution history and the patent itself was very clear [00:35:00] that they were not doing this, this.
What this defendant's accused device. Okay. The court granted the motion based on its examination of the patent and other evidence that was presented and on appeal, the patentee actually asserted that the trial court judgment violated its seventh amendment right to a jury trial on claim construction.
So basically they, they shot the moon and said, Hey, we, we wish we had a jury trial on this and, and you violated our seventh amendment right and we want a jury trial on this claim construction. And so this, this case actually called attention to the fact that it had been, that had introduced expert testimony and then based on the historical allocation of responsibilities between judge, the jury and the expert, as well as kind of the training of the judge and the experience of the judges in, in being able to handle this sort of assessment.
The Supreme Court actually did hold that the claim construction is a matter for the court and hence beyond the province of the jury. So they did actually say this is not okay for a jury [00:36:00] to, to come in and decide claim construction. They emphasize that judges are just better equipped and they just have the training and they're just used to it experience wise.
So Markman really did resolve something for litigation cases. This is, this is huge to have something decided by technical parties or parties that are used to looking at legal language. Because you're talking about the claims, right? You're not talking about paragraphs and the specification. So it was interesting, um, and basically.
It's how that works today, and I'll put it to you this way. I was trained to always do a jury figure. And the jury figure comes from this era before Markman, where it was really important to get your invention across to the jury quickly and to put that in a, a beginning or one of the beginning figures.
And the concept to me was always described. Put this in a figure and describe it in a paragraph or two. The way you would describe this to your [00:37:00] grandmother, and, you know, it sounds a little bit offensive, but I think the intent was to try and explain it in very few technical terms in a very clear, this is what we've invented.
Even if you don't have all the claim language in it, you can convey exactly what you're intending to cover. Right. And then you can add the claim language. Um, so it's kind of interesting and I, I notice when I see somebody else's drafting, whether they were trained this way or not. And it's, it's just very funny, um, because it's the way I think when I draft, I say, okay, what is this first figure going to look like?
And sometimes it looks just crazy, you know, with five or six chunks of things pointing at each other, especially if it's software or network or something like that. Um, and it looks a little bit crazy, but if you follow the arrows, you can follow the invention. So as, as long as you can clarify some things like that, um, it really is going to help.
And I still use it even though Markman occurred, [00:38:00] because if this ev if any of the applications that I have ever drafted, move to allowance and then move to litigation, this is something that the prosecutors and the, um, litigators can use to describe the invention and clarify to a jury, right? This is something that gets a jury into your patent application without exposing them to, you know, fifty-eight lovely type paragraphs on, you know, what you thought the invention was as a practitioner.
Any questions about that? No, that was a great history. Uh, good stuff. Oh, okay. Alright. So the actual evidence used in claim construction, um, it's, it's almost always written evidence rather, rather than physical evidence. You rarely see end products, um, you know, things. Unless it's a show, things aren't held up in court showing here's the end product and here's not the end product, unless it's just markedly clear that, you know, this has a widget and this has a widget and they work the same way.[00:39:00]
Um, claims are read and compared, and portions of claim construction actually can be term determined pre trial, or they can be determined at the end of trial. So claim construction does not have to occur first, and in fact, you can decide later to do a claim construction on a particular term if it's still within the guidelines of the case.
Okay, so who are the players? The players involved in this are the judge, and the judge is responsible for interpreting the law. So any law issues that come up the jury, the jury's responsible for finding the facts or any fact issues and, and again, because they're in charge of the facts, this is why you put a jury figure in your application.
They can rely on this, they can deliberate on this and they can understand it, and then they can use that as a, uh, linchpin to jump to the actual more difficult facts in the case. And then you [00:40:00] have attorneys for each party and each of those attorneys tends to do their own claim construction documents, and they do it so that they can compare, they can argue against, they are aware of the issues.
Um, anybody on this call who is prosecuted knows that if you go into an examiner interview and you haven't looked at that case or that claim, oh maybe about three weeks. You are going to quickly have to come to up to speed with what you did and why you did it, because it's unlikely that you'll remember why you made a specific amendment if you didn't write it down or if you didn't leave yourself some notes.
For the attorneys, they have to actually be really familiar with claim language itself in order to poke holes in the claim language. And that's what they'll be doing in a claim construction hearing. Okay. So the types of evidence include intrinsic evidence and extrinsic evidence. So in a claim construction, you're actually going to look at intrinsic evidence like patent claims, the specification, the [00:41:00] prosecution history of the patent.
And this also includes foreign and related patents and the prosecution history of those patents. So if your claim in your suit that's being construed has foreign and related patents, all of that fodder is usable. And the prosecution history that went on with those fodders. So let's say you had a first case that went after something very broad and the second case went after something slightly narrower than that because it was in a different jurisdiction and you were forced to add something because of that jurisdiction, not because of the art, um, that could be used against you.
Uh, you know, when we do it all the time and you have to do this to get things allowed, it's, it's just something that has to happen. Different jurisdictions have different rules, but it's kind of scary to know that it can come back and bite you. If, for example, your US case is litigated or construed somehow, um, it can be a problem.
And then the intrinsic [00:42:00] evidence also includes prior art that is cited by your incorporation, by reference, um, and in the prosecution history. So anything the examiner cited, anything you cited, anything a third party cited, um, it be, it's huge. So be careful. Um, and extrinsic evidence is actually inventor testimony or expert testimony.
So 1.1 32 decks, 1.1 31 decks. You can have other documentary evidence that would be, kind of depend on what it is. You know, it might be code in this case if it's, if it's a software patent. Um, and then you can use dictionaries and treatises. Long story short, intrinsic evidence is mostly relied on extrinsic evidence is only used if needed or deemed to be needed.
Um, and there is a case called Philip v AWH core. So go ahead and read through that in your own time to see why they don't use extrinsic, uh, extrinsic evidence as often and why it's just a little bit less important. Okay, so [00:43:00] an example here we have a vessel for high-pressure gases. You might ask yourself, what does the term vessel mean?
What did the patentee intend to cover? When you using the term high-pressure gases, the difference between a semantic content and the legal content is the difference between claim construction and claim interpretation. So here, if you're looking at the semantic language, you're looking at the. Whether the claim would pivot on the linguistic meaning of the term vessel.
So is the claim a watercraft? Is it a container, is it a tube-like structure? Right? Like a, like a blood vessel. Um, and then the legal side, which would be actually the claim interpretation side, you have to determine the scope of the term, high-pressure gases to really understand what the vessel is intended to do.
And so a pressure threshold defining high pressure would have to be determined in this. [00:44:00] So claim construction looks at ambiguity versus vagueness, and it actually tries to eliminate linguistic ambiguity. Okay. Claim interpretation tries to actually look at the semantic meaning of the text by looking at the context of what is going on.
So there, it's, it's subtle. It, it's quite different in the court. And claim construction does not look at context unless it is in. The specification or in the extrinsic evidence or other intrinsic evidence, it isn't really what they're trying to do. They're not trying to just clarify the context. When they do a construction, they're trying to make things less ambiguous.
Okay, so I actually have a couple claim construction examples for you. Uh, so this was a claim that has substantially equal in the claim itself. And basically it's a bone screw, but it had a first and a second threaded portion and those threaded portions had pitches. [00:45:00] And this claim says that those pitches are substantially equal.
So what the examiner did here was rely on a prior art named Kim, and he said that this discloses the bone screw having a first end with a first threaded portion and a second end with a second threaded portion. And wherein as can be seen in figure two of Kim, the pitches of the first and second threaded portions are substantially equal.
So this examiner took. The figure two of Kim and bone screw portions 40 and 42 said, well, they look equal, so they must be substantially equal. So, and then the examiner further noted that substantially is a broad term and thus the prior art need not disclose threads that are precisely equal. So it's well established that patent drawings do not define like precise proportions of the elements and may not be relied upon to show particular sizes that if the specification is silent on the issue and, and basically that ordinary drawings which accompany an application for a patent are [00:46:00] merely illustrative of the principles embodied in the alleged invention claimed.
Okay? They don't define precise proportions of the elements relied upon, um, to endow the claims themselves with patentability. So this examiner wrongfully actually used the figures of a piece of prior art to say, well, they look close, they must be the same as what you're claiming. Um, so the appellants argued and they basically said that.
You know, we don't need to be held to an impossibly high standard of metaphysical identity that does not allow for discrepancies due to typical manufacturing tolerances. And the board agreed with them that Substantially the same does mean being within manufacturing tolerances and that the examiner was inappropriately using figures to actually reject substantially uh, equal.
Okay? So what we can learn by this is that is useful. You can use substantially or substantially [00:47:00] equal in a claim, but you wanna avoid reliance on drawing skills or sizes. And you want to define that stuff in your specification because if it's not in your specification, you cannot rely and nobody can rely on the actual size or scale that's in your claim.
Um, you can also use this as an argument if your examiner attempts to use prior art drawing skills against you. So this is actually a positional relationship deal. So this was about a printer, and they basically put the user in the claim and said, the user is so tall and they stand in front of the printer and they execute this paper feeding process to replace this role of paper.
And the issue here was whether, whether the appellant has shown that the examiner erred in concluding the language was indefinite because the manner of the claims recite the height of the paper feeding unit in relation to a user's height, but they don't do it in such a way that isn't ambiguous when the claims are read in light of the specification.
So basically, they didn't [00:48:00] clearly describe how things are positioned in the claims, but they also didn't do it in the specification. Um, and the, and the board found that the specification does not clearly impose a structural limitation on the height of the paper feeding unit. Of the claim printer. And the, the spec itself describes the height of the paper feeding unit using the same language as used in claim one.
So this is a mistake of copy-pasting from your claims and never creating more content beyond that copy-paste. Um, and they, they wanted to see a positional relationship between the user and the printer. One of the things they interpreted was the positional relationship between the user and the printer.
Shown in the appellant figure is actually only one of many possible states in which a user can replace a paper roll. And so they weren't clear enough, they did not put the positional relationship, uh, content in the claim, and there were so many ways to do this differently that they weren't clear, which, what was being claimed because they [00:49:00] didn't describe it well enough in the specification.
So a well-known case, Exxon Research v. Engineering or, um, the United States, uh, had an indefiniteness argument after construing claims that said, when claims are amenable to more than one construction, they should, when reasonably possible, be interpreted to preserve their validity. So you don't wanna interpret a claim and make it invalid or make it a ridiculous combination of, of things that wouldn't happen in the invention or that wouldn't be useful.
Um, wouldn't usefully describe the invention? Uh, this rule of reading claims narrowly in view of ambiguity runs counter to the PTO's broader standard for claim construction during prosecution. But unlike in post issuance claim construction, the PTO actually gives pending claims their broadest, reasonable interpretation, consistent with the specification and in light of the specification as it would be interpreted by one of ordinary skill in the art.[00:50:00]
So this is what I was talking about when I said. This is a different lens than is put on in litigation where they do not look at the broadest, reasonable interpretation. They look at an interpretation given the facts. Okay, so in this case, this is still in prosecution. This was an appeal brief. Uh, the broader claim construction standard is justified because during prosecution, the applicant has the opportunity to amend the claims, and the Federal Circuit has held that an applicant has the opportunity and the obligation to define his or her invention precisely during proceedings before the USPTO.
And I apologize for reading some of this, but I think some of this language is so important, um, in how we draft, in how we create claims, and how we argue in our office actions that, Hey, I just, I'm reading it because it's important, not because I don't wanna talk through it. Um, the PTO is a sole agency vested with the authority to grant exclusionary [00:51:00] rights to inventors for patentable inventions has a duty.
To guard the public against patents of ambiguous and vague scope, such patents, exact a cost on society due to their ambiguity that is not commensurate with the benefit that the public gains from disclosure of the invention. So the PTO is justified in using a lower threshold of showing of ambiguity to support a finding of indefiniteness under the 35 USD, one 12 second paragraph.
And basically that's indefiniteness for anybody new on here. That's an indefiniteness rejection, uh, because the applicant has an opportunity and a duty to amend the claims during prosecution to more clearly and precisely define the meets and bounds of the claimed invention. Okay? And to more clearly, precisely put the public on notice of the scope of the patent itself.
Um, and that's why we do patents. You know, we do patents in general to put this out in the public and make this useful. We get our rights, but we also, after 20 years, get kids, put this out in the public. [00:52:00] So the board actually decided in this case where the user's height and the printer height was not properly relationally described in the claim or the spec.
They said the language of claim. One attempts to claim the height of the paper feeding unit in relation to a user of a specific height who is performing operations on the printer. Claim one fails to specify, however, a positional relationship of the user and the printer to each other. So they said the claim doesn't recite where the printer is located or where relative to the ground of where the user is standing.
So this, this became unclear and indefinite and they could not overcome it. Your lessons here are basically clearly defined relative portion or position If you use them in the claim, I try very hard not to use them in the claims too much. Um, I know with mechanical content, you, you do have to do this and I try very hard to make this clear and make this specific, you [00:53:00] know, I,, it's not something I do as often because I don't do a lot of mechanical content in, you know, day to day to day.
So this doesn't come up for me as often, but I can see that it would be a huge issue if you don't clearly define these relationships. Yeah, I think there was another case too, Kristen,
[00:53:17] Ashley: I can't, I couldn't tell you what it was, but I swear there was a, um, one similar to this where they were talking about like electrodes being.
Um, like close to one another or approximate to one another or something like that. And then it, they were found to be indefinite because it wasn't, you know, the spatial relationship between them wasn't clear of how close they actually were versus the prior and things like that. Yeah. So it definitely comes up in a lot of situations where, um, you have something in your mind, like you said about like how close or far away something is, but, and showing the figures, but without some clarity on what that exactly means.
Um, or some, you know, ranges around it, it can be really unclear.
[00:53:55] Kristen: Yeah. It's hard. It's, I, I shy away even from using adjacent, even though it's, it's [00:54:00] clear and it's a fine term, it's just Okay, do I really mean that? Because if I'm talking about electrodes and I say adjacent, they're probably touching and that means there's no longer two electrodes.
Right. Um, or maybe touching. Right. As opposed to, you know, something more mechanical in nature, which they are adjacent because maybe one lies on top of the other, or, or pushes right into the other. Um. So it, it's an interesting field, but long story short, you can cure this by indicating a height or a size or a length for each claimed element when the height itself is an inventive feature.
And I would go as far as to say, maybe do this anyway, describe some examples of what, what the size actually would be. You're not going to be able to rely on it in prosecution unless the size itself is very important. Um, so like for medical devices, if your catheter has to go to a, a specific anatomical structure, the size is going to matter.
It's going to be very important for, if I'm making just, [00:55:00] you know, a kid's toy, this size is not going to be important and I'm not going to be able to rely on the fact that, well, I made a bigger kid's car and you made a smaller kid's car. Um, it's just not going to be a good argument. And by that token, just be careful with size based claiming, because you can run into that buzzsaw with an examiner.
Um, even with a really great claim and a really good product, it it, it's tough to overcome art when it's almost identical, except for it's larger or smaller and there's no reason for, for difference between larger and smaller. You know, there's no purpose for making something smaller or larger or you don't have an argument for that purpose.
It, it can be difficult to overcome. And takeaways are just be clear in your claim language and watch for a stopple. You know, don't put anything on the record that, you know, could be used against you in claim construction or litigation, um, or further prosecution, you know, just, just. Watch how you describe things.
I know sometimes it's, we try to be very clear in examiner [00:56:00] agendas and in responses to where we're like, no, I didn't mean that. I meant this. Um, you know, just be very careful. I know some practitioners go to the point of never really saying much on the record at all, and they actually only quote the art and they only quote the claim terms and they really don't make very convincing arguments unless it's an extremely inventive novel thing.
You're gonna have some trouble if you never go off of that narrative, but I've seen it done. Um, and, and those are practitioners that often, you know, have two and three RCEs, and then the cases go abandoned because they're not willing to put the important arguments on record for the sake of getting the case allowed.
So it's a delicate balance, as you all know. Um, and then the other takeaway is watch out for relative terms and not properly including specification examples when scale or size-based things are important to novelty. And again, I would go further than that and say, well, [00:57:00] if you're talking about the size or the scale of something ever, you probably want to quantify that.
Okay. What questions do you have? And I apologize for going over, I mean,
[00:57:10] Ty: it's not really relevant, but, but the case you just went through, I. Height of the user in there. Right. And did
[00:57:18] Kristen: you That was
[00:57:19] Ashley: a very strange
[00:57:20] Kristen: claim. That was a super strange claim. I did. I would never put the user in a claim other than, um, maybe have to receive something from a user, or maybe I'm describing the user, but I'm not gonna use the user.
Right. I just don't, I mean, if you
[00:57:34] Adam Mossoff: have a short user, you know, you get a
[00:57:36] Ty: stool. Right. I mean, it's just, it was just, I mean,
[00:57:44] Arman: does it bar other users who are not approximately?
[00:57:49] Kristen: Right. Well, I love, I love that this, this case was like picked because it didn't things well, but it [00:58:00] also, it. Like cardinal sins in the claim itself.
Yeah. That, yeah, it's agreed fully. Um, I don't know who would infringe this claim, by the way, which is even worse. Yeah,
[00:58:15] Ty: right. Yeah. I think it's a, you made
[00:58:18] Arman: a really good point. Um, when you start drafting, uh, you know, initial drafting, it's, it's really important to focus on the inventive concept, you know, and mold it as not too vague, but as, as broadly as possible.
And then down prosecution, just make sure that you're narrowing it down if necessary. That way you're not inventing something or going in, in invalid, uh, claiming direction. You know, we wanna make sure that, uh, in prosecution when patents granted and allowed, that's, that's what you wanted from, from the get-go from, from the start.
Right. And then you've been narrowing it down to clarify [00:59:00] the met and bounds of, of the invention. So that, that, that is really important. Um, when you start out with a claim on the user's height, then it kind of, you know, you get pigeonholed into arguing, you know, what is the user, what's their height? And then these relative terms come in where you are just kind of spinning your wheels and not not getting anywhere.
Right.
[00:59:21] Kristen: That's the Right. I, and I think, I think I said something about this, I said, uh, you know, a better cure here is to remove the user in this example and claim only structure, utility, and configuration. So, yeah.
[00:59:35] David: Right. Yeah. I had a similar kind of comment that Armin had is like, this is one reason I.
Always like to write the claims first before getting too far into the spec and talk about it with the client and make sure that this is the claim scope that they want, that it's as broad as they need it to be, to be, to be, to be valuable. Um, and then, you know, you end up sometimes with some of these.[01:00:00]
Broad terms in there, but then if you realize, well, this is really the best way, or this strategically is what we wanna do going forward, Sure up the specification to explain what you mean by adjacent or what you mean by, um, whatever kind of maybe relative term that you have with enough examples and meet, you know?
[01:00:19] Kristen: Yep. Agreed fully. I, I mean, I don't know, and Ashley can attest to this 'cause I've said it to her and she said it to me, you know, you, you put a claim together and you shove it at somebody else and somebody else says, oh, I see that you're trying to claim a freezer, but do you know, you've just claimed a, a cooler with four sides and a top right.
You know, and you, you unnecessarily go broad. But when you do that, it also makes you decide what else is important here. What else is patentable? What else? What are the, what's the crux of this invention? Right? It's not the four sides and the top. It's likely one of those four or five things, but it could be something entirely else.
No. [01:01:00] Yeah. 'cause
[01:01:00] Ashley: the best claim is the one that only has one nice little neat, inventive concept and then super broad everywhere else, ideally, right? That's still like, you know, is not indefinite and fits into the field that you're focusing on and yada, yada, yada. But you know, ideally it's, you know, it's the one linchpin that someone needs to pull to infringe
[01:01:19] Kristen: it, right?
I would say that for device and mechanical and maybe unpredictable arts and chemistry, I would say the only one it doesn't seem to apply to is software. And that doesn't mean you can't start there. I think you should start there where you have one piece that is kind of the crux and that's what's really the nugget.
But in software, you end up having to bulk up so many things, either from subject matter problems or from, you know, the fact that software is a lot of math and all, all this math isn't new. So what else did you actually invent? Right. So you end up with two or [01:02:00] three things sometimes being patently interesting rather than the one Right.
They're like a unique combination
[01:02:06] Ty: of known elements kind
[01:02:07] Kristen: of thing. Mm-Hmm. Right.
[01:02:09] Steve: So, Kristen, I have a slightly different take on it. Okay. Um, it's not inconsistent with what you're saying, but it's just a little more maybe pointed. So usually when I'm drafting a case, the first thing in my mind is who we shooting?
Um, who's the target? Um, Mm-Hmm. You know, so there's a business aspect to, you know, Patents are like an intersection of a good idea that you can detect infringement on and that you, and that somebody's making money on, uh, or you or they, or both. And that's where your claims ideally want to be. If, now obviously if the invention isn't there or the circumstance don't allow that, uh, then you adapt.
But otherwise, that would be where the, the money is. In all this, that will be where the value, uh, creation [01:03:00]would be. Yeah. And so, and I will normally do this during the inventor interview. So the inventors will lay out their disclosure and somewhere in the course of that discussion, I'll shift from a discussion of their invention to, in broad stroke, what are we gonna claim?
Uh, I'll write the claim for them right in front of them, and I'll lay out what kind of key language do I think is gonna be needed in that claim, and therefore needs to be supported and fleshed in, in the story I'm gonna be telling in the spec. And then, you know, what is my primary point of patentability and my fallbacks, which are in my dependent claims?
Mm-Hmm. And I'll try to get their feedback all right, um, in front of them so that it's comes to a really sharp focus. And if you, it doesn't always work. Um, so there's no s in CAPE that goes with my, uh, American Samoa T-shirt. But, um, you know, the, you know, if you can get [01:04:00] all of that done in the disclosure meeting, the rest of the spec writing, as I said, is telling a story for, as you said, to a, to your grandmother, um, you know, in from going broad and then narrow and fleshing in the details and including definitions, et cetera around those words.
But, you know, it very often needs to be very pointed is to, even if your client is never intending to litigate, and that's almost always what I would advocate. 'cause it very often litigation is a late stage, uh, activity in, in a mature market stated differently. If you have a client who has an invention in an early stage market and someone savagely is ripping off.
And as copied verbatim exactly what they're doing. I usually tell my client that that's great news. One, your potential patents are valuable, and two, uh, their ad dollars are helping to grow the market for you as well. And so the [01:05:00]best thing you could do right now other than put them on notice is just continue to grab market share.
mm-Hmm. And it's only at a late phase in, in non-pharmaceutical, maybe market segments where you'd wanna fight. So just ever so slightly different kind of pointedness to it. Okay.
[01:05:17] Kristen: It is, and it's a good process. Um, if you can, if you can swing it, often inventors aren't quite with you. Um, so sometimes you have to modify that.
But I like the idea of, of having them involved early on and, and explaining some things so that they can help you. Um, because nothing's better than the inventors words, nothing. It's, it's huge. And the more you can get them to speak about it, the more you can have for writing, the more you can add, the more useful you can be.
Um, as far as litigation-based tactics and, and kind of drafting to avoid litigation, the reason I do a lot of those things is because it really boils [01:06:00] down to like a set of 50 rules that if I just draft this way, I can avoid these, you know, 50 problems. Um, so for me it comes a second nature, but it isn't something that you learn overnight and it isn't something, um, that's easily.
Discernible per technical field, right? There's a few things that only apply to electronic electronics. There's a few things that only apply to software. Um, and so it's, it's a weird list of broad strokes that I just try to cover my bases on so that I'm not making that mistake for an inventor down the road.
So I don't think it's hard and that, yeah, I have the exact,
[01:06:40] Steve: yeah, I have the exact same, um, kind of lists, uh, template wise for things to do, things to never do this, use this language. You know, there's a running series of these things that will help prevent problems in litigation. So that aspect of it resonates and [01:07:00] matches really well for what it's worth.
[01:07:02] Kristen: That's awesome.
[01:07:02] Ashley: Lots of good stuff. Um, good things to, to remind ourselves and always delirium. And also I think just underscores also the need to kind of continually review new case law and. Refine the list that we have in our mind or otherwise, and, you know, Do's and don'ts because I think it's an ever-growing list or at least an ever-shifting list.
[01:07:23] Kristen: I had
[01:07:23] Ty: a a quick question just, just to see, um, what you guys' thoughts are in kind of preparing for this meeting. I was looking at some claim construction stuff, and I ran across something we had done in the past. We were kind of cornered by, um, prior art and had to, you know, implement a, a negative limitation to our, uh, our independent claim.
Is, is that, is a negative limitation, like a last-ditch effort or can it be used, you know, in more of a strategic way?
[01:07:55] Kristen: Well, both, um, I avoid it like the plague [01:08:00] because there's always a way when you're drafting to create that negative limitation in a positive. Recitation, right. Or to ask myself, why am I trying to negatively limit this?
Because a competitor can immediately get around that by not doing your negative limitation. Um, if you're stuck and you're in the middle of prosecution and you need it to get around the art, I guess. Um, but it's rare. I, I wouldn't, I, I don't think I've ever done it. I think I've, I've seen it, you know, I've, Mm-Hmm.
I've read about it, but I don't think I've ever had to be forced to do it. Okay. Uh, anybody else concur with your
[01:08:39] Ashley: assessment? Go ahead. Uh, David.
[01:08:42] Kristen: No,
[01:08:42] Steve: I was just gonna say,
[01:08:44] Ty: if it's a good thing to put into the spec, I think that can help if you get into a corner. Right? Agreed.
Whatever it is. Yeah,
[01:08:56] Kristen: I mean,
[01:08:56] Ashley: I know we had one client, I dunno if this is the client that you're referring to or not [01:09:00] Ty, but you know, where they, their whole portfolio was for very specific medical device, um, and coatings for a very, very specific medical device. But
[01:09:09] Kristen: then they started to
[01:09:10] Ashley: realize that maybe their coatings could be applied to other, other devices and, but of course at that point, their own art becomes their own worst enemy.
So in that case, you know, and actually I think this was in, you know, partnership with another law firm as well. It was kinda one of those things that, you know, we're gonna claim a medical device again, but it's not this other medical device because we want the examiner to truly focus on the fact that it's other medical devices that we haven't previously claimed that this coating applies to.
So I think, you know, in some of those instances it's like, you know, you're extending your portfolio to cover new medical devices and how do you clearly differentiate that? We think it could be used for this medical device, but maybe all these other ones that are not this one. So I think, you know, there can be some weird kinda interesting, you know, strategy plays there.
But yeah, I mean I think overall the negative limitations are not [01:10:00] great. Gotcha. So that was a good, good question. Good point. I wonder, I'd be curious to know if there had been like case law around that as well. I haven't really, you know, personally looked into it but there, it's interesting to be,
[01:10:12] Kristen: this is gonna send us a download later.
No, I won't be that cruel. You have enough to read? Yeah.
[01:10:21] Ashley: Well, awesome. Does anybody else have any questions, comments? It's always good discussion. Good thoughts, good share. Appreciate
[01:10:28] Kristen: it. Thank you all. Yeah, thank you. Great
[01:10:31] Ashley: day everybody.
[01:10:32] Kristen: Rest of week a good day. Bye-Bye.
[01:10:36] Steve: Thank you everybody. Thanks.
[01:10:37] Kristen: Bye.
[01:10:38] Josh: Alright, that's all for today, folks.
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