Claim charts book — outline

Claim Charts for Patent Litigation

by Andrew Schulman (Software Litigation Consulting)

Detailed table of contents for book forthcoming in 2017:

PREFACE

  • Codifying a key tool of patent litigation
  • Claim charts perform a major role in patent litigation
  • Also known as infringement contentions (ICs), PICs, invalidity contentions
  • Required by local patent rules (LPRs), and in proposed legislation
  • A tiresome chore, or blessing in disguise?
  • Claim chart creation and analysis are largely uncodified
  • “What’s the big deal?” — yet many cases with problematic claim charts show this is a bigger deal than might seem
  • Simplicity and complexity; goal is simple chart, reflecting complex analysis/investigation
  • Don’t fetishize two-column tabular format; same points can be made about any text comparing limitations with external reality
  • A law book about facts; just as “law” is a category, likewise “facts” is a category
  • Where do claim construction charts (including Joint CC charts) fit in to claim charts?
  • Claim charts as an example of forensic matching, property line-drawing
  • Claim charts as a case study for more general points about technology & law

INTRODUCTION TO CLAIM CHARTS: PURPOSES & REQUIREMENTS

  1. Introduction
    1. Claim charts: an initial working definition; see above
      1. Comparing patent claims with something else, outside the four corners of the patent
      2. Working definition: claim chart breaks patent asserted claims into elements or steps, and compares each element or step with an assertedly corresponding element or step found in an accused product (instrumentality) or piece of asserted prior art (or pieces, for obviousness)
      3. Semicolon-delimited chunks of text as a first approximation to claim limitations
      4. Each limitation in a separate row; one column for limitations, the other column for facts regarding presence/absence of limitation in external item
      5. Claim chart “maps” each and every element/step in claim to corresponding specific locations in accused instrumentality or in prior art
      6. Each and every: “all elements rule”, no dropping elements by NOPing; see e.g. Lucent v. Gateway, 2008 (“loop” when occurs only once?)
      7. Location: LPRs require “specifically where,” not merely “it’s in there,” nor “it must be in there because…” (inferred presence)
      8. “Specifically where” means the factual equivalent of what are called “pinpoint” legal citations
      9. Pinpointing in claim charts: see e.g. Big Baboon v. DellAVG v. Electronic Arts
      10. Failure to pinpoint (dumping in excessive repetitive material for each limitation) provokes demands for “super-pinpoint” citations (e.g. “the source code which satisfies limitation [1.3], and only [1.3]”)
      11. Super-pinpoints can in some cases be impossible to provide, so avoid provoking the demand for them by under-pinpointing; see e.g. Vasudevan v. IBM
      12. The right and left columns are not merely juxtaposed: assert what the connection is, and usually explain why the facts presented support (not necessarily prove) the assertion
      13. Not proving, but disclosing what it is that party contends corresponds to each limitation (DCG v. Checkpoint)
    2. Comparing WHAT to what?; see above
      1. Generally a claims-to-product comparison
      2. Construed claims of patent are basis for claim-chart comparisons; not (directly) title, abstract, specification, drawings, etc. from patent
      3. Almost never doing a product-to-product comparison; a few important exceptions; see Zenith Labs v. Bristol-Myers Squibb
      4. Not necessarily comparing patent claim to a “product”: the accused “instrumentality”, which may be a service, method of making product, offer, bid, demo, etc.
      5. Comparison is not necessarily between technology owned by two different parties; e.g. domestic industry, patent owner’s own prior art, on-sale, public-use (see invalidity chars below)
      6. Almost never a holistic comparison, except obviousness also requires “as a whole”; and design patent infringement/invalidity may be assessed as a whole
      7. Comparison actually not with accused instrumentality as such, but with information regarding it, which may include photographs, drawings, etc.
      8. Information on the accused instrumentality may have been produced in discovery, but at least for earliest PICs, will likely come from public materials (though marketing material is frowned upon), reverse engineering, etc.
      9. Invalidity charts employing earlier patents or published patent applications: not a claim-to-claim comparison, rather claim-to-disclosure; compare each limitation of the patent claim at issue with enabling disclosures in the prior art
      10. Multiple references: obviousness charts show combination of multiple references (and/or with PHOSITA knowledge at the relevant time); otherwise, avoid charting multiple accused products in the same chart, except by way of “representative instrumentalities”; avoid “Frankencharts”
      11. Representative instrumentalities: may need a separate chart showing why a charted product is representative of other, uncharted, products; see Bender v. Maxim
      12. Comparing the patent claims with the patent itself: claim construction charts, of course, and possibly lack-of-enablement charts
    3. WHO does the comparison? (or, Who knows more?); see above
      1. This should be straight-forward: P is responsible for infringement charts, D is responsible for invalidity charts; D is responsible for non-infringement response, P is responsible for validity response chart
      2. However, parties often try (e.g. by providing bare-minimum “boilerplate” claim charts) to shift the burden onto the other side (“you figure out why I think you infringe”)
      3. This undercuts a key purpose of claim-chart requirements under the LPRs: avoiding the need for mind-reading or speculation regarding the other side’s theory of the case
      4. As with discovery cost allocation, it often comes down to who knows more, or is in the best position to find out with the least expense/effort, some facts
      5. P ought to know best what its own invention looks like, i.e. it ought to be able to spot infringement (caveat: P is not necessarily the true authority on what its claims mean; while P may have been “its own lexicographer,” claim meaning at the end of the day depends on what the PHOSITA having read the specification would have thought, and not on what P now thinks the terms mean)
      6. But D ought to know best what its technology does and what it contains
      7. Thus, P’s quest for infringement detection may be like looking for a needle in a haystack; even if P ought to know exactly what the needle looks like, it may not know much about the haystack (caveat: D may really not know much of what it’s “crown jewels” haystack contains either!; this also comes up in trade-secrets cases, where owners have vague walls around huge unknown areas, rather than high walls around small known areas)
      8. D will certainly know more when P’s invention is allegedly practiced non-publicly, e.g. software that runs behind a server firewall, or technology for which reverse engineering would be more expensive than the likely value of remedies from the case
      9. D’s greater knowledge of its technology is an important basis for discovery
      10. But before D should be expected to open its kimono to P, P should first demonstrate why it thinks D is infringing; hence PICs, which are admission tickets to discovery
      11. For some technologies, this is said to present P with a “chicken-and-egg” or “Catch-22” problem, especially for computer source code, but that is frequently not true
      12. Parties should not finesse missing-information (or costly-to-uncover or “we don’t feel like going to the bother of even trying to uncover”) problems, with “information & belief” recited as a mantra
      13. Reverse engineering can usually solve these “Catch-22” type problems
      14. Belief that D always knows more can lead to “res ipsa loquitur” or “flour barrel” style burden shifting a la Byrne v. Boadle
      15. Sometimes the burden really is shifted from P to D: see 35 USC 295
      16. Concept that “high tech” requires res ipsa loquitur
    4. WHEN is the comparison done?; see above
      1. Claim charts are produced early in patent litigation, as well as later
      2. The earliest claim charts, often called PICs, will be provided shortly after the case is filed, and will reflect P’s pre-filing investigation (which must have been reasonable under Rule 11; see xxx on interaction among claim charts under LPRs and pre-filing investigation under Rule 11)
      3. The term “PIC” once designated a separate “Preliminary Infringement Contention,” but these have generally been phased out in favor of initial infringement contentions (ICs)
      4. The point is that there are not two different types of charts, nor are PICs separate from ICs
      5. Initial ICs (PICs) are pre-discovery and pre-Markman; non-initial ICs are often pre-Markman
      6. There is a single contention chart, with an initial version which will be missing some information supplied in the final version, but which generally will not propound dramatically different case theories from those in the final IC.
      7. This applies to D as well as to P, and D must supply meaningful, non-boilerplate non-infringement and invalidity charts in as little as 30 days after receiving P’s charts
      8. Applicability to D as well as to P means that claim charts are not necessarily (despite Goodlatte’s proposed legislation) a useful tool to defend Ds from “trolls”
      9. The intent for initial ICs which will not radically differ from the final ICs is to early lock-in or “crystallize” case theories
      10. As noted above, claim charts replace contention interrogatories, which were often deferred until after discovery, and until after claim construction (Markman), resulting in uncertainty as to the other side’s case theory
      11. The goal of early case lock-in appears to contradict the entire purpose of fact-finding during discovery, and parties naturally will often want to adjust their factual positions following a Markman ruling
      12. But without early commitment to a case theory (i.e., early non-preliminary claim charts), the result is “musical chairs” or “shifting sands” litigation, with dramatic changes to party theories of infringement and invalidity following the Markman ruling; see O2 Micro v. Monolithic Power Sys.
      13. Claim charts were designed to avoid the “musical chairs” problem, as well as the related “Whack-a-Mole” problem, in which a party presents multiple theories, without firmly committing to any one, thereby forcing the other side to (at best) over-invest in case investigation
      14. Of course, parties will be allowed to amend their claim charts with “good cause,” if no undue prejudice to the other side, as explained in chapter xxx on amending & supplementing
      15. Everything in this book on claim charts comes in the context of often tight deadlines
      16. Combined with the fact that the final IC should not come as a surprise to the other side, the early-disclosure-of-case-theory claim chart requirement can have a perverse result: a tendency to assert the kitchen sink in PICs, without much basis beyond “information and belief,” so as to leave a “placeholder” or “hook” in case a theory later turns out to be necessary
      17. See especially PICs in which the function/way/result schema for equivalence (DoE) is recited as a mindless mantra; the alternative is a PIC in which P thinks it has a slam dunk on literal infringement, says nothing on the DoE, then ends up after the Markman ruling wanting to assert the DoE, and not having left a hook for itself to do so in its PIC
      18. The perverse result is of course meaningless boilerplate recitation of DoE in PICs (see e.g. Garmin v. TomTom); this is perverse because it contradicts the claim-chart goal of meaningful theory lock-down
      19. However, any set of rules such as this will necessarily require trade-offs between multiple contradictory goals; see chapter xxx for in-depth discussion of how LPR claim-chart requirements navigate among contradictory goals such as giving P its day in court, avoiding harassment of D, and so on
      20. See chapter xxx on duties to supplement claim charts
      21. See chapter xxx on frequent appeals to an ostensible “reserved right” to amend or supplement, in particular by experts; any such right cannot simply be “reserved,” but depends on good cause, and lack of undue prejudice to the other side
      22. Good cause for amendment based largely not on newly-discovered info as such, but rather on what reasonably could have been discovered earlier with “diligence” (reverse engineering or its equivalent)
    5. “WHERE” issues for claim charts; see above
      1. Claim charts themselves are all about location, location, location: “specifically where” each element or step of a patent claim is found in some other object, method, or reference
      2. Claim charts may contain highly confidential material (such as citations from computer source code), requiring that they be produced and/or kept at a designated location
      3. A party, especially its 30(b)(6) witness, may be asked to produce a claim chart (or claim-chart like mapping) on the spot, at a deposition
    6. WHY claim charts?; see above
      1. [TODO: fix sloppy language; possibly ADD: underlying policies are clearest in rules on amending claim charts; ICs must have a different purpose from PICs (which is to “streamline discovery”); ICs even when wrong can serve as a target for motions; requirement of early lock-in may encourage scattershot PIC; meaningful notice and frequent “including but not limited to” formulations: by the close of discovery, is D entitled not only to notice of what P regards as infringing, but also what P regards as non-infringing?, i.e. is D entitled to know what P actually views as the boundaries of P’s property?]
      2. Infringement/invalidity contentions are not intended to “show” in the sense of proof, but rather to establish that a party will have a reasonable chance of being able to show (make its case)
      3. Claim charts are not intended to prove a party’s case, nor as an arena for substantive disputes
      4. While not proof as such, possible failure of proof (Celotex), summary judgment, as potential results of inadequate claim charts
      5. A claim chart can be incorrect, without being inadequate; e.g. wrong claim construction vs. unreasonable claim construction
      6. Claim charts required under Local Patent Rules (LPRs) as infringement and invalidity contentions
      7. And claim charts required early in litigation (pre-discovery, pre-Markman) as well as later
      8. What set of problems were intended to be solved by mandatory claim charts, including early in litigation?; intended to replace contention interrogatories
      9. Purpose of claim charts: not mere notice, and not proof, but something in between
      10. Plausibility (Iqbal): Litigant shows why it believes it has a reasonable prospect of proving particular case theories
      11. Goal of early elimination of bogus litigation, curbing abusive litigation practices (has it worked?); aimed at D as well as P, though recent goal of controlling NPEs (“trolls”)
      12. A quick history of pleading rules, the trade-offs in different forms of pleading, and relationship with discovery
      13. Trade-offs, e.g. avoid moving target in litigation with early commitment to theories vs. learning significant new facts in discovery which warrant changes; form vs. substance
      14. Fewer fishing expeditions: Narrowing issues for discovery (“hah!” says one reviewer)
      15. Tickets of admission to the next stage in litigation
      16. Teeing-up the case for Markman claim construction hearing
      17. Claim charts replace contention interrogatories (FRCP 33(b)) that parties would otherwise employ
      18. Why are claim charts mandatory, early in litigation, in contrast to older deferred contention rogs?
      19. Claim charts, like responses to contention rogs, involve mixed law/fact (apply law to facts)
      20. Avoid the need for mind-reading or speculation regarding the other side’s case
      21. Ultimate purpose is lock-in, early crystallize, no post-Markman shifting sands, no Whack-a-Mole
      22. [DONE: consolidate above with Purposes/Policies section below]
      23. Gamesmanship, boilerplate, and sanctions
      24. Plaintiff (P) and defendant (D) use claim charts to communicate, via “mind-reading” games (“guess what my theory of infringement would be, were I willing to commit to it”)
      25. Claim charts requirements as part of a trend towards heightened pleading in other areas, including securities class actions and prisoner litigation (Iqbal; abrogation of Form 18)
      26. General trend in which some litigation tasks moved from discovery to pleading
      27. While claim charts are not “pleading” as such (except see Goodlatte proposed legislation), they are not part of discovery either; PICs are a precondition to discovery
      28. Claim charts in proposed federal patent legislation (Goodlatte)
      29. Likely some intent to inhibit “trolls” (NPEs), but this purpose undercut because of equal application to D as well as P, and D often on tight deadline not of its choosing
      30. A blessing in disguise: Affirmative reasons to take claim charts seriously
    7. Conclusion (to WHAT, WHO, WHEN, WHERE, WHY discussion)
  2. Example claim charts
    1. Difficulty of finding realistic claim chart examples; often confidential
    2. Even in published opinions re: claim charts, chart itself often omitted
    3. Yet often difficult to determine holding, or compare cases, without the chart at issue (“ex facto jus oritur”)
    4. Simple schematic examples from patent litigation training
    5. Example claim charts in published opinions
    6. An acceptable PIC (AVG v. Electronic Arts)
    7. An unacceptable PIC (Connectel v. Cisco)
    8. An unacceptable IC (Nokia v. Sutton) [example 2]
    9. A deficiency chart, with an inacceptable IC (H-W v. Apple) [example 2, 3, 4]
    10. Another deficiencies chart (Bedrock v. Softlayer et al.)
    11. Invalidity chart (Geffner v. Linear Bearings) [example 2, 3]
    12. Invalidity chart (GE v. Nintendo) [example 2, 3, 4]
    13. Obviousness chart (Pumatech v. Extended Systems); included in ITC case
    14. Infringement contentions with claim construction (Bedrock v. Softlayer) [example 2, 3]
    15. Design patent chart (Crocs), from Patent Case Management Judicial Guide
    16. A “parts list” to help show invalidity (Geffner v. Linear Rotary Bearings)
    17. “Preliminary Claim Chart” sent with licensing demand, used in declaratory judgment case (Activision v. Gibson Guitar)
    18. Claim chart in Motion for Preliminary Injunction (Myriad Genetics v. Ambry Genetics); BRCA
    19. Older anticipation claim chart (Twin Disc v. US, 1986) [example 2], from blog history of claim charts
    20. Infringement chart based on standards (Certicom v. Sony) [example 2]
    21. Covered Business Method review (CBM) claim chart with non-patent prior art (review of 8,209,389) [example 2]
    22. Example: Limitations chart from case with multiple asserted patents with overlapping limitations
    23. Example: Invalidity chart in ITC case (Nokia complaint; HTC chart)
    24. Example: Joint Claim Construction Chart [move to TYPES section, since this isn’t really the type of claim chart covered in this book]
    25. Phrases to help locate example claim charts
    26. Conclusion
  3. Not a holistic exercise: parsing patent claims into limitations, and identifying parts/elements/steps in the real world
    1. Patents are not concepts, and infringement is not conceptual: “the name of the game is the claim”
    2. “There is a where there”: Infringement has a specific location
    3. “Each x3” required by Local Patent Rules: “A chart identifying specifically and in detail where each element of each asserted claim is found within each accused instrumentality.”
    4. Limitations (and sometimes sub-limitations, which may be explicit or implicit)
    5. Parsing and disaggregation
    6. “Seams” between parts being disaggregated (it’s not always semicolons, and sometimes not only semicolons)
    7. Finding attributes or features along which parts and sub-parts can be lain side-by-side and compared
    8. Function, way, and result (used in DoE test) as one example of a set of three attributes by which comparisons can be made
    9. Pinpointing facts
    10. Weaving facts in chart right column with claim limitations from chart left column
    11. An analogy: 1L law school essays
    12. Parts lists, laundry lists, and the “bag of parts”: uses and dangers; see e.g. Intertrust vs. Microsoft (“laundry list”)
    13. In the end, fitting limitations back together “as a whole”
    14. “Every” angle and view for design patents, plant variety patents
    15. Holistic will likely be “conclusory,” which can be treated as legal conclusion, not factual assertion (cf. Iqbal)
    16. Conclusion
  4. Purposes of claim charts, and policies behind Local Patent Rules (LPR) requirements [DONE: consolidate with WHY section above]
    1. Claim charts are not intended to prove case
    2. Claim charts are almost never evidence; except e.g. in Rule 11 hearing, or to show recipient’s reasonable apprehension of suit in DJ case
    3. Claim charts are not mere notice
    4. Underlying policies for claim chart requirement
    5. Underlying Policies clearest in rules on amending claim charts, especially post-Markman
    6. Claim charts intended to lock down specific case theories, early in case: no shifting sands
    7. PICs (“initial infringement contentions”) are not very preliminary; see e.g. Townshend IP v. Broadcom
    8. PIC purpose different from IC purpose
    9. Relation of claim charts to plausibility standard under Iqbal, Twombly, In re Bill of Lading (see IPWatchdog article)
    10. Claim chart may be wrong, yet not offend claim-chart rules, so long as the chart cements theory of case
    11. Claim charts as part of trend from notice pleading to heightened plausibility pleading
    12. Not a cure for “trolls”: claim chart requirements apply equally to D as to P
    13. Reduce fishing expeditions, narrowing discovery requests
    14. Claim charts take the place of interrogatories that parties would likely have propounded in the absence of LPRs
    15. Intended to reduce gamesmanship, not as a further arena for gamesmanship or harassment
    16. Undesirable boilerplate and mantra recitation
    17. Ticket to next stage in litigation, including mandatory disclosures under LPRs
    18. Failure of proof (Celotex)
    19. Summary judgment (SJ)
    20. Force you to think through the facts and shortcomings of your case
    21. Experts: disclosure of opinion basis
    22. Conclusion
  5. Claim chart requirements from Local Patent Rules, FRCP, case law, and proposed legislation
    1. Quote basic rule for infringement charts from e.g. ND Cal, ED Tex, etc.
    2. Each x3: “chart identifying specifically where each limitation / of each asserted claim is found within / each Accused Instrumentality”
    3. Can do representative limitations, if careful; not merely “see”; incorporate by reference; the same limitation language in different claims (e.g. system vs. apparatus) may call for different facts
    4. Can do representative products, if careful; see xxx on representative instrumentalities
    5. “Identifying specifically where”: Location, location, location
    6. Other “specifically” and “in detail” requirements
    7. ID (by name, coordinates, etc.): “Each product, device, and apparatus shall be identified by name or model number, if known”
    8. Do not ID element/step by mimicking claim language; should use the language of the charted instrumentality, not of the patent
    9. How identify “where” for method, or for negative limitatons (e.g. “without noise”)?
    10. Instrumentalities: “apparatus, product, device, process, method, act, or other instrumentality”
    11. Doctrine of equivalents (DoE): function/way/result, insubstantial differences
    12. Explanations of “why”
    13. Means-plus-function limitations under 112(f): structure, act, material, function
    14. PICs
    15. Other “Patent Initial Disclosures”, including preliminary invalidity contentions
    16. Indirect infringement contentions (inducement, contribution)
    17. Non-infringement contentions
    18. Invalidity contentions: prior art, non-published prior art, sales
    19. Validity contentions, including absence of limitations
    20. Obviousness contentions
    21. Lack of enablement contentions
    22. On-sale and public-use contentions
    23. Offers for sale
    24. Unenforceability contentions (inequitable conduct)
    25. Willful infringement contentions
    26. Practicing, “for any reason … its own”: practicing/working charts
    27. Declaratory judgment contentions
    28. Final Contentions
    29. Responsive contentions and non-contention responses
    30. Interaction of contentions with claim construction (CC), including Joint CC chart
    31. Interaction of contentions with discovery, including mandatory disclosures under LPR responsive to proper contention charts
    32. Computer source code
    33. Design patent, plant variety: every view, “every available angle” (ND NY)
    34. Purposes behind contentions under LPRs, especially with regard to amendments
    35. No gamesmanship or boilerplate
    36. Amending claim charts
    37. Good cause for amendments: recent discovery despite diligence, new product launches, information from consultant or expert
    38. Scheduling: tight deadlines, especially for respondants
    39. Duty to supplement
    40. Signing contentions
    41. Sanctions
    42. Limits on number of claims
    43. Mandatory disclosures relating to contentions
    44. Miscellaneous from LPR regarding contentions
    45. LPRs re: expert reports
    46. Case law interpreting LPRs: ND CA, ED TX, etc.
    47. Claim chart-related requirements under FRCP
      1. Rule 11
      2. Pleadings
      3. Discovery
      4. Contention interrogatories
      5. Amending and supplementing
      6. Expert: basis for opinion
      7. Motions in response to claim charts
    48. Claim chart requirements under proposed federal legislation (Goodlatte); will old LPR-based claim-charts cases provide authority for statutory claim charts?
    49. ITC rules for importation cases
    50. Individual court rules
    51. Model order for e-discovery
    52. Patent Case Management Judicial Guide
    53. Sedona Conference WG10 on Patent Litigation Best Practices
    54. Conclusion
  6. Results of inadequate or untimely claim charts: required amendments, failure of proof, and sanctions
    1. Errors do not make a chart inadequate
      1. Incorrect or erroneous does not mean chart is inadequate; charts not place to litigate substance; need only be reasonable/adequate; can be wrong; and in fact, if are wrong, then have served purpose (see xxx)
    2. What makes a claim chart inadequate?
      1. Missing an asserted claim, or missing an unasserted claim depended upon by an asserted claim
      2. Missing a limitation, e.g. one buried inside a lengthy semicolon-delimited clause containing multiple limitations
      3. Missing case theory, especially doctrine of equivalents (DoE) or obviousness
      4. Missing an accused instrumentality, e.g. when charting only a “representative instrumentality” which is not representative of an uncharted product
      5. See FRCP Rule 11: unreasonable inquiry, harassing, imposing undue delay/cost
      6. Some typical problem charts:
        1. “Mimicking” claim charts (which merely mimic or ape the claim language)
        2. Mere “information and belief” charts
        3. Charts which merely “dump” facts, merely juxtapose facts with claim limitations, and/or fail to “weave” facts with attributes of limitations
        4. “Inventor fallacy” charts (assuming device/method operation from its results, output, or external appearance)
        5. “Grab bag” claim charts or “Frankencharts” (picking one limitation from one product/mode, another limitation from a different/incompatible product/mode)
        6. Merely “exemplary” claim charts (“For example but not necessarily limited to, see…”; adopting the language of discovery requests in claim charts), and lack of commitment
        7. “Laundry list” or parts-list claim charts: bag of disconnected parts/elements/steps
        8. Poor-evidence claim charts, including over-reliance on marketing materials, standards, third-party materials
        9. Failure to use claim construction, or unreasonable implied claim construction
    3. Typical motions re: inadequate charts
      1. motion to amend (e.g. PICs or ICs to add new accused product, or theory such as DoE or obviousness)
      2. motion to compel (e.g. greater specificity)
      3. motion to dismiss (e.g. accused products, defenses)
      4. motion to enforce court order
      5. motion to exclude (e.g. theory, defense, prior-art reference)
      6. motion to join (e.g. additional accused infringer)
      7. motion to limit (e.g. number of asserted claims)
      8. motion to preclude (e.g. expert from testifying to X; other side from supplementing)
      9. motion to stay (e.g. pending adequate claim chart)
      10. motion to strike (e.g. infringement contentions, portion of expert report, amendments)
      11. motion to supplement (e.g. to add new prior-art references)
    4. For better or worse, usually court’s bark is worse than bite; party given 30 days to fix chart
    5. E.g., motions to strike inadequate charts generally treated as motions to compel amendment
    6. Example cases; get cases from surprisingly useful ANPATDIG:
      1. 2:35 Cases finding P’s ICs insufficient
      2. 2:37 Cases denying leave to amend ICs or striking supplemental contentions
      3. 2:37.50 Dismissing or finding waived new infringement theories not included in ICs
      4. 2:40 Cases finding accused infringer’s noninfringement contentions insufficient
      5. 2:42 Cases denying leave to amend noninfringement contentions or striking supplemental noninfringement contentions
      6. 2:42.50 Dismissing or finding waived new non-infringement theories not included in non-infringement contentions
      7. 2:45 Cases finding invalidity contentions insufficient
      8. 2:47 Cases denying leave to amend invalidity contentions or striking supplemental contentions
      9. 2:47.50 Dismissing or finding waived new invalidity theories not included in invalidity contentions
    7. And to extent harsh results, as much against D as against P
    8. Sanctions (attorney or party) rare; sanctions as set out in LPRs
    9. 35 USC 285 “exceptional” case
    10. “Death penalty” rare
    11. Rule 11 rare; Rule 11 “may”; but see e.g. View Eng’g v. Robotic, Netlist v. Smart Storage (while some courts blend 3-1 and Rule 11, court agrees with Shared Memory v. Apple in avoiding)
    12. This, perhaps more than 101 subject matter issues addressed in Alice (and exercising the public), is perhaps a reason for perceived software patent problem:
    13. Bar set too low, too easy to launch case with cost pressures on D
    14. Don’t be the exception
    15. Order to quickly amend, within 30 days; note relation to duty to supplement?
    16. Court may refuse request to amend with e.g. new products (e.g. Davis-Lynch v. Weatherford, re: “death penalty”)
    17. Strike PIC/IC under FRCP 16(f) failure to obey order
    18. Exclusion of expert chart, report, opinion, or portions
    19. Impacts on expert report/testimony of deficiencies in party’s claim charts (e.g. ContentGuard v. Amazon/Google)
    20. Impacts on party of deficiencies in expert’s claim charts incorporated in report
    21. D’s mandatory disclosures under LPRs only triggered by an adequate P claim chart; see xxx
    22. Attorney fees for objective baselessness of case (Octane/Highmark fee-shifting cases), which may be shown by P’s claim charts; and/or exceptional case, with claim chart showing inadequate pre-filing investigation; see e.g. Lumen View v. FindTheBest.com (CAFC declines to find abuse of discretion in finding exceptional case and awarding fees, based on ill-supported infringement assertions); Yufa v. TSI (CAFC, uphold SJ of non-infringement, based on defective infringement contentions); fees, contrast costs (e.g. expert witness fees)
    23. Failure of proof (Celotex) from missing chart elements; SJ of an entire claim is appropriate if there is “a complete failure of proof concerning an essential element of the nonmoving party’s case,” because such an omission “necessarily renders all other facts immaterial”
    24. Summary judgment (SJ) generally; usually per-claim, though if the inadequacy affects all claims, the inadequate chart can result in “death penalty” for case
    25. Conclusion: why only wrist-slapping?; has indirectly led to Goodlatte, which judges view as unnecessary, intrusive
  7. Conclusion to Introduction

TYPES OF CLAIM CHARTS

  1. Summary of claim chart types
  2. General considerations
  3. Initial or “preliminary” infringement contentions (PICs) based on pre-filing investigation
    1. General background on heightened pleading (PSLRA, Lerach, etc.; see Scott Dodson book on heightened pleading)
      1. Notice pleading
      2. Iqbal, Twombly, and In re Bill of Lading
      3. Rule 84 forms (including Form 18) are removed in Judicial Conference Aug. 2013 proposed FRCP amendments
    2. FRCP Rule 11 in patent litigation; with a brief history of Rule 11; proposed changes to Rule 11 in HR 2655
      1. Fee awards for “exceptional” cases under 35 USC 285, for “objectively baseless” infringement contentions brought in bad faith (see article)
    3. Local Patent Rules and proposed legislation
      1. Initial/preliminary Infringement Contentions
      2. Proposed legislation: HR 3309 heightened pleading requirements (but not in Leahy S. 1720?)
      3. Early element-by-element details of accused products
      4. While pre-filing investigation (including “dead ends”) is protected work product (see Hricik, Patent Ethics: Litigation at 181), results will go into initial infringement contentions
    4. Conventional wisdom about software products & source code (the “Catch 22”)
    5. Application of Rule 11 and Local Patent Rule 3-1 to software/internet patent litigation
      1. Post-discovery source code and “pinpoint” code citations
      2. Impact of post-discovery source code on pre-filing reverse engineering: “Catch 22”?
      3. Possible bases for the “Catch 22” view of software patent litigation
      4. Another basis for the “Catch 22” idea: Misreading of means-plus-function case (Network Caching v. Novell)
      5. Results of the “Catch 22” view of software patent litigation
      6. A software-specific “policy lever”?; but software patents are not confined to the “software industry”
    6. Comparison to other instances where plaintiff’s burden is reduced, or presumptions are reversed
      1. Presumption for products by process under 35 USC 295
      2. Software as flour barrels: res ipsa loquitur for high tech?
    7. Evidentiary doctrines of solely or “peculiarly” possessing information
      1. Who generally knows more detailed facts about infringement, plaintiff or defendant?
      2. Cases where D knows less than P about what D is doing: end-users, “mom and pops,” “covered customers”
      3. Cases where P really knows almost nothing about what D is doingBackground on pre-filing investigation notice pleading, Rule, Local Patent Rules, and forthcoming legislation: see source code book chapter 6
    8. General issues of policing/monitoring the market to detect patent infringement
      1. Demand letters
      2. “Pre-filing discovery” (see Scott Dodson on “New Pleading”)
      3. Searching for infringement (contrast freedom-to-operate searches)
      4. Using patent citations as a source of “candidates” for further investigation
      5. Law of private investigation in IP cases (“IP, PI”): straw purchases of tightly-controlled products, duty of candor, Model Rules 8.4(c), 4.1(a); NY bar IP exception
      6. Fear and uncertainty over reverse engineering products under clickwrap license and DMCA
    9. “Acquire the target”: Get and run the to-be-accused product
      1. Where & how to acquire products, for further inspection
      2. “Look somewhere else”
      3. Products/services not reasonably accessible
      4. “Acquiring” a method or process
      5. Future and outdated products
      6. Expensive products
      7. Products with negotiated purchases (with a brief digression on pre-filing negotiations, C&D letters, “you might be interested” letters, and other pre-filing interaction between patent holder and to-be-accused infringer)
      8. Straw purchasers, using private investigators
      9. Too many products & “representative instrumentalities”
      10. Standards as proxies for products
      11. Relying on the inventor as a substitute for getting the product
      12. Relying solely on marketing materials instead of getting the product
      13. Getting the case off on the wrong foot by not inspecting the accused product
      14. Exhausting publicly accessible sources of information
      15. Inspecting the accused product is not merely to satisfy rules
    10. “Reverse engineering or its equivalent” as the factual basis for PICs
      1. Factual material in PICs will often be based on reverse engineering: see xxx below on facts in right-hand column of claim chart
      2. Using reverse engineering as a litigation tool
      3. Reverse engineering “or its equivalent”: element-by-element analysis
      4. Is reverse engineering or its equivalent “required”? (Exhausting publicly-accessible sources of information; what is publicly accessible?; how much effort need be expended for something to no longer be publicly accessible?)
        1. Exception for reverse engineering when “impractical”
        2. Disproportionate expense
        3. Technical inaccessibility
        4. Impracticality of reverse engineering when source-specific information is required
        5. Impracticality from non-technical restrictions on reverse engineering: clickwrap; DMCA; Innovatio case re: Wireshark “interception”/recording to detect infringement; whether or not to “jailbreak” mobile devices
        6. Exception for reverse engineering when “unnecessary”
        7. Information available from indirect sources
      5. Representative instrumentalities
      6. Application to software of the pre-discovery reverse engineering requirement
        1. Application of reverse engineering pre-discovery requirement to software seen as somewhat unusual
        2. Application of reverse engineering pre-discovery requirement to software seen as inapplicable to software when source code will later become available
        3. What can be learned pre-discovery by reverse engineering software products & internet services?
      7. General points about static vs. dynamic reverse engineering: “Freudian vs. behavioralist”; dynamic RE only sees the particular tested configurations; danger of over-generalizing from dynamic RE
      8. Typically need an expert or technical consultant to do this work, but some attorneys have demonstrated ability e.g. to use Fiddler (example of Josh Rubin in Specht v. Netscape)
      9. Has someone else already done a product “teardown” or reverse engineered the product?
      10. Static reverse engineering; see below
      11. Dynamic reverse engineering; see below
    11. PICs are supposed to be “nit picky” and supposed to be not-very preliminary
    12. Movement away from “PIC” terminology e.g. in ND Cal.; now initial version of infringement contentions
    13. PICs unfortunately are often done by an attorney with little or no expert input, using superficial “pattern matching” of claim language to vaguely similar wording at other side’s web site, or in user interface of its product (e.g., PIC which mapped raster-based patent claim to bitmap-based product feature; especially sad when the product did also have a raster-based feature)
    14. Application of rules to defendants as well as plaintiffs: “kneejerk counterclaim” cases
    15. PICs as admission ticket to patent litigation (not just a hoop to jump through)
      1. PICs as material relevant to reasonable pre-filing investigation under Rule 11; PICs should embody that one has exhausted publicly available information, and engaged in “reverse engineering or its equivalent” to learn patent-relevant details of the accused product (see chapter 6)
      2. PICs as prerequisite to mandatory disclosure and discovery under Local Patent Rules (and under proposed patent-reform legislation, e.g. Goodlatte)
      3. PICs as slightly-flexible early cementing of theories of infringement and invalidity
      4. Get expert involved earlier in case than you would otherwise prefer
      5. Benefits to party from taking PICs seriously:
        1. Process of building PICs to locate case “hot spots,” and to guide targeted discovery requests
        2. Process of building PICs to determine preferred claim construction for later Markman hearing
        3. Process of building PICs to locate “sweet spot” (often-narrow channel) between infringement & likely prior art
      6. Claim charts shown in licensing demands/negotiations may create a basis for a declaratory judgment (DJ) action; see case xxx
    16. For non-initial infringement contentions (ICs), turning PICs into ICs; see xxx below
  4. Preliminary invalidity contentions
    1. Largely parallel PICs, except tight deadline (often 30 days)
    2. Overcoming presumption of validity (though chart need not prove, so heightened burden for invalidity doesn’t directly impact invalidity charts?)
    3. Prior art must have been publicly accessible at the relevant time
    4. Prior art must have enabled the PHOSITA at the relevant time, except for on-sale and public-use bars
    5. More; see invalidity contentions below
  5. Infringement contentions (ICs)
    1. Literal infringement
    2. Doctrine of equivalence (DoE); charting function/way/result and other DoE tests
      1. Claims tables often, following an assertion of literal infringement, will include an obligatory boilerplate “or, in the absence of literal infringement, D’s X satisfies the Y limitation of this claim, because X has the same or similar function as Y, uses substantially similar means as Y, and has the same or similar result to Y”
      2. In other words, Function/Way/Result (F/W/R) is recited as a mantra
      3. This shows that the claims table drafter likely has not thought through what Function, Way, and Result actually mean
      4. Function = role, purpose
      5. Way = implementation, means
      6. Result = output
      7. If claims chart drafter has merely recited F/W/R as a mantra, without truly parsing out its components, this should also cast serious doubt on their assertions of literal infringement
      8. If something literally infringes, it would at least also infringe under the DoE; therefore, F/W/R can be used as a framework to think through whether there is literal infringement; alternatively, consider other attributes (apart from the three attributes of function, way, and result) along which the limitation and the code can be compared (see xxx)
      9. In PIC, one need only indicate whether asserting DoE (see e.g. ED TX LPR 3-1(d): “Whether each element of each asserted claim is claimed to be literally present or present under the doctrine of equivalents in the Accused Instrumentality”), but a non-initial IC must spell out F/W/R
      10. Other ways of showing DoE, apart from F/W/R; DoE “factors” from Graver Tank and Warner-Jenkinson: known interchangeability, evidence of copying vs. design-around, etc.
      11. Interaction of DoE with 112(6) means-plus-function, where equivalence to disclosed means is considered part of literal infringement
      12. One can plead DoE in the alternative; but by the time of IC, one should have committed (and again, if do plead DoE in the alternative, don’t just repeat F/W/R as mantra)
      13. N.D. Ill. LPR 2.2(d) requires an F/W/R explanation for each DoE assertion; also W.D. Pa. 3.2 and Utah 2.3(d)
    3. Means-plus-function limitations under 112(f); handling “means for” and other functional limitations in IC
      1. Post-AIA 112(f)
      2. Patent law generally cares more about structure than about purpose; this is one reason why preambles are generally not limiting: so long as the accused instrumentality does X, we typically don’t care if D is doing X to implement a floor wax, even if P’s patent claim says that X’s purpose is to provide a dessert topping (SNL floor wax/dessert topping skit)
      3. At the same time, US patent law also allows claim language which focuses on purpose/results/function rather than on way/implementation/means — but only so long as the functional claims language is backed-up by specific means disclosed in the spec
      4. The important point for patent litigation (as opposed to prosecution) is that infringement (and anticipation) will only be found when the specifically-disclosed means are present, not merely when the claim’s function/purpose is present
      5. Functional language under 112(6) usually is marked by “means for…”, but functional language can be anything which specifies what result is to be achieved, without specifying in the claim how it is to be achieved; see Williamson v. Citrix
      6. There are limits, of course, to what is seen as functional language under 112(6): for example, “square root” specifies the result/output to be achieved, with no indication of how to go about doing so, but this function/part/element/step is so well known that a specific means/implementation need not appear in the spec, and likely any implementation in the accused instrumentality will be seen as meeting the claim limitation
      7. Often one speaks of “claims” under 112(6), but really it is limitations which are or aren’t functional, and which therefore are or aren’t limited in scope by disclosure of “means” (implementation) in the patent spec
      8. Functional claiming is not limited to method claims [MORE xxx give example from apparatus claim]
      9. Local patent rules, e.g. ED TX LPR 3-1(c), requires that claim chart include “for each element that such party contends is governed by 35 U.S.C. § 112(6), the identity of the structure(s), act(s), or material(s) in the Accused Instrumentality that performs the claimed function”
      10. This need to identify structure/act/material [SAM] is somewhat different from general requirement that, for each limitation, one show at least one “structure, process, algorithm, feature or function [SPAFF] of any accused product” (Connectel v. Cisco)
      11. The key difference is that the infringing product must match, not merely the functional claim language, but also the specific means/implementation (or equivalent) disclosed in the spec, or its equivalent (also true of invalidating prior art)
      12. The difference between functional and non-functional claim language implicates how far the code examiner must “drill down” in the code to determine whether code to do X satisfies a claim limitation of X that is covered under 112(6)
      13. Insufficiency proving infringement/anticipation of functional claim language, by focusing only on the function in the claim and not also on the means in the spec, resembles the “inventor’s fallacy,” discussed at xxx, in which from a product’s output of X the inference is made that the product “must” use the inventor’s means Y to achieve X, without adequate consideration that there may be other ways than Y to achieve X
      14. Under the Aristocrat and WMS Gaming lines of cases, a patent spec need not supply source code as the “means” for a software patent’s “means plus function” claim, but the spec must provide specifics (and an infringing/anticipatory instrumentality must match those specifics)
      15. One can plead 112(6) in the alternative, but by the time of ICs party should have committed; see Intertrust v. Microsoft on “premature” 112(6) [?]
    4. Special cases such as Jepson and Markush
  6. Indirect infringement: charting inducement & contribution
    1. Still need a single direct infringer
    2. Method claims: infringer may be end-user, consumer
    3. Who carries out process?
    4. If P can show that third party is acting directly under D’s control or direction, then the issue is direct infringement rather than inducement or contribution
    5. Legal elements of inducement, contribution, how these might be located in source code or other evidence
  7. Miscellaneous infringement charts, such as importation (ITC), product-by-process, or parts exportation
  8. Representative-instrumentality charts
  9. Non-infringement chart
    1. Generally need only rebut specific infringement assertions, not proactively assert non-infringement; but DJ
    2. Focusing on disputed limitations
    3. Showing absence of disclosed means for functional limitations
  10. Invalidity contentions
    1. Showing anticipation by comparing patent claims to disclosures in prior-art patents or patent applications (comparing patent to patent, rather than patent to product)
    2. Show obviousness using multiple references, or single reference combined with expert’s testimony as to PHOSITA’s knowledge at the relevant time
    3. “Alice and Bob” 101 subject-matter chart (Walker Digital v. Google)
    4. Lack of enablement, comparing claims with spec disclosures and with PHOSITA common knowledge
    5. On-sale or public-use bar (statutory bar chart)
    6. Showing on-sale (including offer to sell), by showing that patent claim was embodied in and/or practiced by product
  11. Unenforceability contentions
  12. Validity rebuttal charts
    1. Including non-obviousness response chart with secondary considerations (e.g. commercial success) which may require claim chart to show that P’s product embodies or practices the invention, together with “nexus” to practicing the patented invention (see Arlington Industries v. Bridgeport Fittings, IPR)
    2. Non-obviousness response chart may require showing absence of limitations from references (see e.g. CSIRO v. Buffalo Tech.)
  13. “Final Contentions”
  14. Working/practicing charts
    1. No “working requirement” in US patent law, but need to show working/practicing for:
      1. To show domestic industry (DI) in ITC importation action; see below
      2. To show commercial success of embodiment of patent, as secondary consideration for non-obviousness; P must show, on limitation-by-limitation basis, that product embodies at least one claim of patent (as well as showing “nexus” of commercial success to patented feature)
      3. To show technical ability to meet demand, for lost profits calculations
      4. To show non-troll/non-NPE status, when requesting injunction or other equitable relief under eBay v. MercExchange
      5. Practicing/working charts in Local Patent Rules, e.g. ND CA 3-1(g): “If a party claiming patent infringement wishes to preserve the right to rely, for any purpose, on the assertion that its own apparatus, product, device, process, method, act, or other instrumentality practices the claimed invention, the party shall identify, separately for each asserted claim, each such apparatus, product, device, process, method, act, or other instrumentality that incorporates or reflects that particular claim.”
  15. Domestic industry (DI) chart for ITC: a type of working/practicing chart
    1. Technical prong of domestic industry (DI) in ITC importation case; only need 1 example, can even be from non-asserted claim (?)
    2. http://www.usitc.gov/secretary/fed_reg_notices/rules/itcrules409.pdf: “A showing that an industry in the United States, relating to the articles protected by the patent exists or is in the process of being established. The complainant shall make such showing by appropriate allegations, and when practicable, by a chart that applies an exemplary claim of each involved U.S. patent to a representative involved domestic article or to the process under which such article was produced…”; contrast this “exemplary” claim chart to show domestic industry, with charting every claim for which infringement is asserted.
    3. Domestic industry can be shown with licensee working/practicing, even an unwilling licensee from earlier litigation.
    4. At least for ITC domestic-industry chart, make sure chart shows currently practicing
  16. Expert claim charts
    1. Expert’s claim charts vs. party’s claim charts
    2. Party’s ICs covered under Local Patent Rules, Rule 11, etc.; expert claim charts are not (see MPT v. Apple)
    3. But expert’s claim charts covered under FRE, Daubert (and party’s are not?); see ch.xxx
    4. Expert can establish linkages (D’s code x matches P’s claim limitation a) for which party itself would otherwise need written evidence; but no mere expert ipse dixit
    5. Expert generally should provide more WHY (specific reason why this claim limitation reads on this particular piece of code) than party’s ICs are typically expected to provide
    6. Expert can assume some claim construction based on expert’s opinion of what PHOSITA would have understood term to mean at the relevant time
    7. Don’t try to use expert to “backdoor” theories or evidence which party failed to present in timely fashion in its ICs; see xxx below on deadlines and scheduling
    8. Expert report which merely attaches (or “incorporates by reference”) the party’s ICs, while putting forward theories/evidence different from that in the attached IC
  17. Limitations charts for multiple overlapping asserted patents
  18. “Parts lists” as demonstrative exhibits
  19. Injunction/contempt-related chart
    1. Is D, already found to infringe, and already subject to an injunction, now violating the injunction (and therefore in contempt of court) by continuing to practice the same technology as was enjoined?; see Tivo v. EchoStar and “colorably different” standard in source code book ch. 30
    2. This chart may be more akin to a copyright-infringement chart than to a patent-infringement chart because, rather than showing that code x2 infringes patent claim y, it may be sufficient merely to show that x2 is not “colorably different” from enjoined code x1 which was  already found to infringe y.
    3. Much earlier, claim chart accompanying a TRO or preliminary injunction (PI) request, to show “likelihood of success on the merits”
  20. Product-to-product comparison charts
  21. Claim charts in petitions to PTAB for re-examination, IPR, PGR, or CBM review
    1. Only show prior art disclosing limitations; no argument (VMWare v. E&TRI)
    2. But do need to explain (GN ReSound A/S v. Oticon A/S)
    3. [MORE]
  22. Claim charts employed in licensing demands or negotiations; interaction with declaratory judgment (DJ)
    1. Cases in which presentation of claim charts does or does not cause reasonable apprehension of impending litigation, for declaratory judgment (DJ) action
  23. Claim charts in attorney opinion memos, Freedom to Operate (FTO); interaction with willful infringement
  24. Design patent and plant variety patent charts: views and angles
  25. Other types of charts which are substantially different from the types of claim charts covered by this book
    1. Generally, the book covers “factual” claim charts (interaction with the outside world), rather than purely “legal” claim charts (within four corners)
    2. Claim construction charts for Markman hearing
      1. Unlike Markman claim construction tables, in this book we are comparing the claims (as construed) to some external reality (e.g., a software product and/or source code)
      2. Markman charts are largely legal (but may contain facts re: PHOSITA’s understanding of a term at a given time)
      3. ICs are largely factual (but will at least imply some claim construction, by virtue of which facts it chooses to align with each claim limitation, and may contain explicit claim construction and/or show infringement under a variety of alternate constructions; see xxx)
    3. Joint Claim Construction Chart [show example]
    4. Charts showing dependent-claim trees, patent families (e.g. ClaimBot)
    5. Claim charts in jury verdict forms
    6. Claim charts employed by PTO examiners
  26. Conclusion

DRAFTING CLAIM CHARTS

  1. Basics of drafting a claim chart
    1.  Introduction
    2. Basic format of most claim charts: two columns x one row per limitation
    3. Headers and footers, including confidentiality and attorney-eyes-only designations
    4. A very basic example
  2. Rows: Handling claim limitations & the preamble
    1. Splitting claims into limitations, including rows devoted to certain non-limiting clauses
    2. Starting with semicolons, but only as a first approximation
    3. Preambles: important even when non-limiting
    4. Preconditions, including “whereby” clauses
    5. Explicit sub-limitations, including those introduced with “wherein … comprises”
    6. Implicit sub-limitations
    7. Attributes of limitations
    8. Identifying/naming limitations
    9. Claims without semicolons; carefully using commas
    10. Lengthy or complex limitations
    11. Deceptively-simple-looking limitations
    12. “Means for” and other functional limitations under 112(f) means-plus-function
    13. Negative limitations: “without”, “in the absence of”, “substantially free of”
    14. Alternative limitations: “or”, Markush group selection, and branching dependency trees
  3. Left column (LC): claim language & scaffolding while drafting the report
    1. Claim language, split into rows (see above)
    2. Bulleted lists with details on limitations, as scaffolding while drafting the report: claim construction, non-limiting examples, “means for” disclosures from spec
  4. Right column (RC): assertions, facts, explanations
    1. Right column is of course for facts corresponding to each limitation, but is not a mere dumping ground
    2. Assert explicitly that facts in RC match or show non-match with limitation in LC
    3. Present the facts, inter-weaving with (construed) language of limitation
    4. Explain why the facts match or do not match the limitation (i.e., why LC “reads on” on RC, or does not); see e.g. Intertrust v. Microsoft (how/why as well as where)
    5. Structure the comparison between RC and LC, using attributes, facets, or features of the limitation
    6. Doctrine of equivalents (DoE): structuring the comparison with function/way/result (F/W/R) and/or other established tests for equivalence
    7. Use subheadings, at least as scaffolding during chart construction, to show that nothing has been glossed over
    8. Use subheadings, including in final version of chart, e.g. for multiple references (obviousness chart), or a closely-interrelated family of multiple accused products
  5. Dependent claims, multiple asserted independent claims, repetition, and the “cross-reference vs. copy & paste” problem
    1. Dependent claims
    2. Effect on infringement & invalidity of dependent claim, if base claim is invalid
    3. Unusual types of dependent claims: e.g. “The system of any one of the claims 1-4 or 15 wherein”, “The device of any one of claims 7 through 12, wherein”
    4. Multiple independent claims: why even claims with seemingly identical limitations require some separate handling, at the very least for device vs. method vs. medium variations which may have different direct infringers
    5. Handling repetitiveness: copy & paste considered harmful, but cross-referencing carries risks
  6. Omissions from claim charts
    1. Claim charts often both excessive (hundreds of copy & pasted pages) and missing key information
    2. Different detail/explanation requirements than e.g. patent specs (which unlike claim charts are ostensibly aimed at PHOSITAs)
    3. Silly omissions: entire claim limitations glossed over, because “trivial” (e.g. presence of a CPU)
    4. Forgetting to use claim construction in chart
    5. “On information and belief” often used as an unthinking mantra; Rule 11 re: “likely to have evidentiary support”
    6. Being explicit about truly missing information, especially in PIC, after diligent “exhaustion” of available sources of information
    7. Entire theories of infringement or invalidity missing from early ICs; see amending/supplementing
    8. “Hedging bets” with “For example but not necessarily limited to” and “See, e.g.”
    9. Assumptions and inferences:
      1. The “inventor’s fallacy” (inferring element x from output y)
      2. Reference to standards without showing product’s adherence to relevant portion of standard
      3. Inferring product operation of naming of parts (“token matching”)
      4. Assumption that product necessarily contains an element/step, see e.g. Bender v. Maxim; CSR Tech v. Freescale Semiconductor
      5. Inherency (?)
    10. Negative limitations, e.g. “in the absence of”, “substantially without”
    11. What can and should be omitted?
  7. Wrapping up: Look at the chart as a whole
    1. When to use holistic assessment of infringement/invalidity of claim “as a whole”
    2. Finishing touches: Putting the chart to bed
    3. Other chart formats, including three-column chart with claim construction

SPECIFICITY: EVIDENCE, PINPOINTING LOCATION & BEING EXPLICIT

  1. What specifically is meant by “specificity” in claim charts
    1. Standards of specificity at different stages of the litigation (NOT a standard of proof as such)
    2. LPR claim chart requirements with “specifically”, and even “as specifically as possible”, albeit also with “if known”
    3. Specificity does NOT mean dumping in lots of specifics; it means almost the opposite: carefully selecting what “goes with” each limitation
    4. Case law examples: e.g. dumping in same set of multiple pages of source code, with source-code filename precisely delineated, is not specificity; isolatingáone function per limitation is
    5. Of course, such one-to-one correspondence between facts in RC and limitations in LC is often not possible, but there are alternatives to dumping
    6. Multiple claim limitations supplied by a single step, see e.g. MobileMedia v. Apple
    7. Remember that an ultimate goal of claim charts is to help narrow issues, not help leave them loosey-goosey until the last possible minute when the sides figure out what they want to say (the “shifting sands” or “musical chairs” approach which claims charts were “specifically designed to avoid”)
  2. Pinpointing, “location where”, names for locations, and level of detail
    1. Isolating presence of limitation within accused instrumentality or reference
    2. “Pinpointing” facts, fairly similar to legal pinpoint citations
    3. Not only to save reader time, but to isolate specifically what is being relied upon, so this reliance can be assessed; also to demarcate what is NOT being relied upon
    4. “Super-pinpoint” requirements and/or requests sometimes provoked by evidence dumped in without isolating
    5. Example super-pinpoint request: “only those lines of source code for each limitation that are necessary to allegedly meet each such limitation” (Vasudevan v. IBM)
    6. While this is often not possible (and one-to-one mapping of limitations to instrumentality not required), it is actually a worthwhile goal
    7. Locations are often specified with names: use the other side’s proper nouns; don’t ape/mimic/parrot claims language; see section on name-matching issues
    8. Fear of commitment to narrowing-down mapping of RC to LC in claim chart
    9. Appropriate levels of detail in claim chart, in relation to e.g. SJ motion
    10. Too much detail: “I think he doth protest too much”
  3. Which instrumentality is being accused, or reference being asserted?
    1. LPRs require identification of accused instrumentality “shall be as specific as possible”
    2. “Each product, device, and apparatus shall be identified by name or model number, if known”
    3. “Each method or process shall be identified by name, if known”
    4. Not only name & model number, but version number, software platform, etc.
    5. “If known”: reasonably accessible, readily available, available with diligence?
    6. Cases in which P doesn’t know all to-be-accused instrumentalities at time of filing (PIC)
    7. Products in development, testing, one-off custom products, bids, demos, limited editions, working models, proofs of concept (POC), some of which are made or used or offered, even if not sold
    8. Inaccessible processes and methods, whose operation has been inferred
    9. Locating publicly-accessible names or identifiers for otherwise-hidden processes (e.g., server software behind firewall may be “chatty”)
    10. Late-discovered products or prior-art references: amendment and good cause
    11. Later amendment more difficult for D with prior art, which by definition should have been publicly accessible
    12. Representative instrumentalities — see section on multiplicity
  4. What date ranges are relevant?
    1. Priority dates and e.g. CIP of multiple patents with different priority dates
    2. One-year grace period for inventors’ own on-sale, public-use
    3. Date for making is generally older than date for sale/offer (except vaporware, other sell before make)
    4. Right column date(s): when was product released?; specific accused version?
    5. Caution e.g. in working/practicing charts: Accused features may have been present in older versions of product
    6. Date from when can measure infringement, when notice required (marking, etc.)
    7. Documents, testimony, etc. used to show product infringement: from relevant time period? or forward-looking, speculative, or outdated with respect to accused product?
  5. What type of infringement is being asserted, and do the claim type and facts align with it?
    1. Aligning claim type (device, method, etc.) with infringement type (make, use, etc.)
    2. Can a method be imported (ITC)?; offered for sale?;
    3. Process vs. product-by-process
    4. “Directional” claim types (e.g., receiver, transmitter, server, client): do facts face in same direction?
    5. Same chart will likely contain different claim types: careful with copy & paste
  6. Types of evidence used in claim charts: general minimum requirements
    1. Pre- vs. post-discovery
    2. Evidence should have detail or granularity sufficient to show “where” (per LPR) each limitation is found
    3. Assertions of presence (“it’s in there”), without location/where, are generally unacceptable
    4. Case law re: charts in which P “has made no attempt to identify the precise location within defendant’s product where the infringing component is located”
    5. PICs: the “reverse engineering or its equivalent” standard for pre-filing investigation; see e.g. Network Caching v. Novell
    6. Reverse engineering: see e.g. Judin v. US & HP (scanners); Antonious v. Spalding & Evenflo (golf balls); Bender v. Maxim; Refac v. Hitachi; but see Intamin v. Megnetar (not obligated to reverse engineer roller coaster)
    7. “Source code, specifications, schematics, flow charts, artwork, formulas, or other documentation sufficient to show the operation of any aspects or elements of an Accused Instrumentality” (per LPRs)
    8. Charts, formulas, literature, drawings, photographs and videos, images, translations
    9. LPRs on P’s and D’s infringement and invalidity productions
    10. LPRs on Markman hearing “best available specimens of patented technology and allegedly infringing activity (e.g. products, schematics, photos, product information sheets)”
  7. Types of evidence used in claim charts: specific issues
    1. Above all else, actually USE the information in the chart: pinpoint to relevant location/where; don’t merely dump in reference, nor tell reader of chart to go “see” somewhere else
    2. Missing evidence: over-use of “information and belief”, and when I&B is properly invoked
    3. Marketing/advertising materials frowned upon; see e.g. Vasudevan v. IBM; View Eng. v. Robotic
    4. Sufficiently-specific marketing or other vendor statements, if can be tied to specific limitations, may help void more complex proof
    5. Forward-looking documents: functional or requirements specifications, so long as not unduly speculative; “fruition”
    6. Standards documents, if adherence to relevant portion of standard can be shown
    7. Third-party materials, if not relied upon to show indirect infringement
    8. Deposition transcripts can help avoid complex proof (“yes, we do X”), if clear that deponent was referring to the relevant limitation, product, feature
    9. Results of experiments, tests, reverse engineering, generally with exhibit/appendix detailing the experiment itself as well as its results
    10. Expert-supplied material (in party’s rather than expert chart), e.g. obviousness chart with expert affidavit attachment re: PHOSITA knowledge at relevant time
    11. Computer source code (see detailed example below)
    12. Drawings, photographs
    13. Screen shots from web sites, including archived web sites (Wayback Machine, archive.org)
    14. Inherency issues
    15. Remember, don’t just dump in facts: pinpoint, try to isolate presence of limitations
    16. Aim for shorter not longer excerpts
  8. Computer source code: A detailed example of one important type of evidence, including useful substitutes for source code
    1. D’s proprietary source code generally only available after P produces initial IC (PIC)
    2. Initial IC (PIC) usually NOT a “chicken & egg problem” or “Catch-22”, because software products can often be subjected to in-depth examination even in the absence of proprietary source code
    3. Products based in part of open source, with vendor modifications
    4. Extracting textual information from software products, in the absence of source code
    5. Running products with instrumentation to log dynamic activity, e.g. “packet sniffers”
    6. Proprietary source code in invalidity chart: careful, because proprietary material itself is not prior art; use as evidence of what prior-art product, public use, on-sale, etc. did
    7. Using source code in infringement chart: accused instrumentality is a generally product/service selling/using, NOT source code “making”, ensure the source code is incorporated into the product
    8. For method claims, ensure the source code is ever used in the product; see “latent code” cases
    9. Using source code (generally post-discovery) in IC: case law requiring “pinpointing”
    10. Pinpointing with pathname (including product/platform/version), filename, and line numbers or function name or structure name
    11. Some specific “structure, process, algorithm, feature, function” (SPAFF) (Connectel v. Cisco)
    12. Reliance on naming (and likely synonyms) to search code, but not mere “token matching”
    13. Does D’s function named DoXYZ really meet limitations X, Y, and Z?: often need to “drill down” below name to see that name is accurate description of function operation
    14. Conversely, often functions named DoAB and DoCD can be shown to literally meet limitations X, Y, and Z; different naming does not in itself invoke doctrine of equivalents (DoE)
    15. Use comments in code, though understand that comments may be outdated, incorrect, or cryptic
    16. Pay attention to whether code selected matches “direction” of limitation; e.g. don’t use DoSend function to meet limitation which reads message in receiver claim, unless can show why reasonable inference
    17. Quoting from proprietary source code in claim charts under attorney-eyes-only PO; may need redacted version, or PO may prohibit “copying” source code, interpreted to cover quoting code in chart
    18. See also Schulman forthcoming Source Code book chapters on discovery, PO, pre-filing investigation, etc.
    19. Generalize from above to other types of evidence, e.g. schematics
  9. Using claim construction in claim charts
    1. Focus here is not on claim construction (CC) as such, as on its use in claim charts
    2. Provisional/alternative CCs in pre-Markman claim charts, e.g. PICs
    3. Pre- vs. post-Markman claim charts
    4. One of the underlying goals of claim charts is to avoid the “shifting sands” approach to claim construction, e.g. radically changing theories of infringement/invalidity after unfavorable Markman ruling; see chapter on amending claim charts
    5. A purpose of claim charts is also to “tee up” the case for Markman
    6. Need for some reasonable provisional CC even in earliest PIC (e.g. Eon-Net v. Flagstar)
    7. Claim charts comparing effect of multiple alternative proposed claim constructions
    8. Frequently parties forget to use claim construction in right column of claim chart (facts are presented in terms of literal unconstrued language, rather than the construed language)
    9. Using CC to structure comparison between chart right and left columns:
    10. CC often calls out features (adjectives) not explicit in unconstrued claim language
    11. Do comparison using these construed limitation features
    12. “Weave” each individual attributes/features of construed limitation in LC with corresponding (or not) attribute/feature of element/step in RC; see e.g. Droplets v. Amazon (chart screen shots and arrows, but missing labels to tie to claim limitations)
    13. Because charts are often prepared by technical consultants/experts, the chapter concludes with a quick non-attorneys guide to claim construction: claim differentiation; appropriate use of specification; handling “means for” claims; using range and variety of examples in spec as guide to scope of limitation, etc.
  10. Specifically how is the chart’s right column (RC) related to the left column (LC)?
    1. Making specific concrete assertions, rather than vague “is related to” or “corresponds to” hand-waving
    2. Case law re: “mere juxtaposition”
    3. Case law re: “corresponds to”, “reference is made to” (Sutton v. Nokia), “See”, etc.
    4. See above on using claim construction to help connect the chart’s RC with its LC
  11. Paying attention to small “non-technical” words and word endings
    1. Case law e.g. “therein” in Supersoaker case; “distinct” in i4i case
    2. Case law e.g. -ing vs. -ed vs. -able (“programmable” vs. “programmed” in Intel case)
    3. Being alert to small word differences when charting multiple similar claims
    4. See e.g. IGT v. Bally Gaming (“in accordance with”, “responsive to the initiation of”, “predetermined”)
  12. Conclusion

MULTIPLE CLAIMS, PATENTS, PRODUCTS, CONSTRUCTIONS AND DEFENDANTS

  1. The “quantity case,” and multiplicity problems
    1. Multiple products/versions x multiple patents/claims/limitations = the quantity case
    2. Non-substantive (“strategic” or tactical) reasons for the quantity case, including gamesmanship to bury the other side and its hired experts and consultants in make-work
    3. Federal Model Order limiting asserted claims and prior art, following In re Katz Interactive Call Processing
    4. Quantity problems and solutions apply to defendants as well as plaintiffs
    5. Copy & paste used to generate huge claim charts
    6. Defendant motions effectively insisting upon huge claim charts
    7. Excessive, repetitive claim charts: courts are seldom fooled (e.g. Connectel v. Cisco:”six hundred footnotes simply refer back to the same handful of string cites” to a single document)
    8. “Dumping” claim charts, e.g. claim limitation juxtaposed with 7 pages of source code without a pinpoint citation (Sutton v. Nokia)
    9. Boilerplate claim charts attacked e.g. in N.D. Ill. LPRs
    10. The “See” problem: Attempts to solve quantity/repetition/boilerplate problems with vague cross-references
    11. Why courts frown upon certain types of cross-references in claim charts, and how litigants superstitiously respond with massively repetitive copy & paste
  2. Multiple asserted claims
    1. Court may limit number of asserted claims
    2. Claim chart may need to include unasserted claims depended upon by asserted dependent claims
    3. “At least” language does not preserve assertion of additional claims (Microthin v. Siliconzone)
  3. Charting dependent claims, and partially-repetitive independent claims
    1. How to chart multiple claims, with overlapping limitations and/or evidence, without copy & paste repetition on the one hand, or vague “See” cross-references on the other
    2. Useful phrases which both avoid repetition and avoid vague “See” cross-references
  4. Multiple accused products and representative instrumentalities
    1. P is master of its case, and can’t complain if there are “too many products to chart” (Vasudevan v. IBM); see also Vigilos v. Sling Media, quoting Shared Media v. Apple
    2. D sometimes insists that P produce separate charts for each accused product: busywork
    3. P sometimes attempts to chart only selected products, yet continue to accuse uncharted products
    4. P is allowed to chart “representative instrumentalities”, product families — if it shows why charted products are representative of uncharted products; see e.g. Bender v. Maxim; Vigilos v. Sling Media, citing Implicit Networks v. HP
    5. Product families: see also Renesas v. Nanya; Intertrust v. Microsoft
    6. P sometimes covers multiple products in a single chart, using subheads within each limitation/row; this can result in “grab bag” or “Frankencharts” in which some limitations are found in one product, another limitation in a different product (or in an incompatible mode of the same product)
    7. Sometimes one table per product, e.g. Linex v. Belkin
  5. Multiple asserted patents, and “Limitations charts”
    1. Limitation charts as an alternative to copy & paste when multiple patents are asserted, with overlapping limitations
    2. All limitations from all asserted claims of all patents are extracted, given names or ID numbers, and presence/absence shown for each instrumentality; claim charts then refer back to the Limitation charts
    3. Example Limitation charts with associated Claim Charts
    4. Extracting common limitations: “parts is parts”?
    5. Dangers in assuming commonality among limitations in multiple patents, even given identical specs
    6. Danger of creating a “parts list”, “laundry list”, or mere “bag” of disconnected parts
  6. Multiple defendants
    1. Somewhat similar issues to charting (unaccused) direct infringer, and then (accused) indirect infringer acts of inducement or contribution
    2. Charting deep-pockets D, along with little-guy D2 in desired venue (e.g. EDTX)
    3. Charting multiple little-guy (“mom and pop”) Ds, with expected intervention by their common vendor
  7. Multiple alternate claim constructions
    1. Pre-Markman claim charts often require multiple potential claim constructions
    2. Three-column claim chart, with middle column used for claim construction(s)
    3. Subheads within claim chart right column, to show presence/absence of limitation under different constructions
  8. Conclusion: Quantity, repetition, busywork, and “gamesmanship”

ANALYZING, RESPONDING TO, AND OFFENSIVELY USING THE OTHER SIDE’S CHARTS

  1. Analyzing a claim chart
    1. Critically analyzing not only the other side’s charts, but also one’s own draft charts, before submission
    2. Searching, not just reading: look for what the chart doesn’t say, e.g. is there something for each accused product for each limitation?
    3. Are the experts’ charts too similar to the party’s charts, including e.g. typographical errors, quotation mistakes?
    4. Does the type of infringement asserted (e.g. “making” or “importing”) match the type of claim (e.g. method) and the defendant’s products/services (e.g. interactive website)?
    5. Consistent mapping of claim limitations to facts, across entire claim: e.g. if part X is connected to part Y in one limitation, then X must at least be connectable to Y in another limitation
    6. Is infringement accusation relying on mere ability to infringe, without showing actual infringement?
    7. Using who, what, where, when, why, how to analyzing a chart; some examples below:
    8. Who is carrying out each step of a method claim?; whose product embodies all the elements of an apparatus claim?
    9. Where is infringement occurring?: so-called split/divided infringement; ITC importation of methods, data?
    10. Where do all the facts for each limitation “face”?; is it in the same “direction” as in the claim (transmitter vs. receiver, client vs. server)?
    11. Where: does the claim chart truly pinpoint the location where a limitation is located/disclosed, or is the chart engaged in mere “Ragu pointing” (“it’s in there”)?
    12. When: is the evidence cited in chart’s right column from correct date range for infringement without prior use?
    13. Why: are inferences and connections explicitly drawn out?; search for the word “because”; claim chart reader is NOT a PHOSITA
    14. How do the facts (corresponding to each limitation) fit together?; do they fit together, or is it a mere parts list?; do connections between facts supplied for each limitation fit together in the same way as in the claim?
  2. Responding to the other side’s claim charts
    1. Remember that an inaccurate claim chart is NOT thereby a deficient or inadequate chart; an inaccurate chart may serve the very  purposes of claim charts
    2. Given the other side’s unhelpful or inadequate chart, whether to complain (e.g. move to strike) or to live with unhelpful chart
    3. Tables of deficiencies (e.g. H-W v. Apple)
    4. Expert declarations re: chart inaccuracies/omissions (e.g. Aspex v. Concepts in Optics)
    5. Creating one’s own internal confidential version of the chart that the other side ought to have produced
    6. Follow-up interrogatories (though LPRs intend claim charts to take the place of likely interrogatories)
    7. Rebuttal charts (party and expert)
    8. Using PICs and ICs at depositions, including expert and 30(b)(6) deps
  3. Offensively using the other side’s claim charts
    1. Using a claim chart as a source of party assertions and acknowledgments
    2. Using a claim chart as a source of party implied claim construction, e.g. D offensively using P’s infringement contentions in D’s invalidity and claim-construction arguments
    3. Mining differences between multiple charts, e.g. between party’s infringement and validity charts

COMMON CLAIM CHART PROBLEMS, WITH CASE EXAMPLES

  1. Summary of claim chart problems
  2. “Conclusory” claim charts; significance of “conclusoriness” in “new pleading” (Iqbal)
  3. “Mimicking” claim charts (which merely mimic or ape the claim language); interweaving both P’s and D’s nomenclature
  4.  Mimicking/aping the mere language of the claim itself does not provide sufficient notice: see e.g. STMicroelectronics v. Motorola; Vigilos v. Sling Media
  5. Repetitive claim charts, copy & paste, dump & repeat, and boilerplate
  6. Grotesquely large claim charts
  7. Incomplete claim charts: omissions & assumptions
  8. Mere “information and belief” charts
  9. Charts which merely “dump” facts, merely juxtapose facts with claim limitations, and/or fail to “weave” facts with attributes of limitations
  10. Inconsistent claim charts, including contradictions among multiple charts
  11. Vague & ambiguous claim charts
  12. “Inventor fallacy” charts (assuming device/method operation from its results, output, or external appearance)
  13. Overly inferential charts, including unstated inferences and improper handling of inherency
  14. “Grab bag” claim charts or “Frankencharts” (picking one limitation from one product/mode, another limitation from a different/incompatible product/mode)
  15. Merely “exemplary” claim charts (“For example but not necessarily limited to, see…”; adopting the language of discovery requests in claim charts), and lack of commitment
  16. “Laundry list” or parts-list claim charts: bag of disconnected parts/elements/steps; see e.g. Intertrust v. Microsoft
  17. Poor-evidence claim charts, including over-reliance on marketing materials, standards, third-party materials
  18. Failure to use claim construction, or unreasonable implied claim construction
  19. Failure-of-proof claim charts, and the fearful “throw everything in” or “kitchen-sink” overreaction
  20. “Too good” charts: sometimes correct claim charts seen as “too good for the other side”, but sometimes a seemingly “thorough” chart is frivolously overdone
  21. Overdone chart: see Nilssen v. Osram Sylvania
  22. Untimely charts, and improper chart amendments or supplements
  23. Problematic claim-chart requests, including “super-pinpointing” and busywork requests
  24. Conclusion, including likely results of problems

WRAPPING UP

  1. Amending and supplementing claim charts: good cause, diligence, and prejudice; claim chart scheduling
    1. Scheduling of claim charts
      1. Early in case (pre-discovery, pre-Markman), not deferred after discovery as contentions rogs typically were in patent cases?
      2. Plaintiff first (e.g. WD PA 3.4), or plaintiff/defendant exchange at the same time (e.g. ND GA 4.4(a))?
    2. Motions to amend distinct from:
      1. Turning initial or preliminary PIC into IC, and possible divergence between theories in IC from those in PIC
      2. Duty to supplement
      3. Court-compelled orders to amend (often based on other side’s motion to strike)
    3. Seeking claim chart amendment for:
      1. Newly-accused products
      2. Newly-discovered prior art
      3. Products of newly-added defendants
      4. Newly-added infringement theories, especially doctrine of equivalence (DoE)
      5. Newly-added invalidity theories, especially obviousness
      6. Evidence recently uncovered during discovery
      7. Conformity with court’s Markman claim construction ruling
      8. Related topic of amended expert claim charts with new (or arguably new) expert opinions is addressed in the chapter on experts and claim charts
    4. Parties and experts often “reserve a right to amend or supplement”
    5. Conservative philosophy for amending ICs, in contrast to liberal standard for amending pleadings (e.g. Jazz Pharma v. Roxane Labs)
    6. Apart from FRCP 15, claim chart amendments are usually governed by a local patent rule requiring “timely showing of good cause” (e.g. LPR 3-6 in NDCA and in EDTX)
    7. Amendment also requires absence of undue prejudice to the other side, and leave of court
    8. “Good cause” includes:
      1. P’s recent discovery of nonpublic information re: accused instrumentalities, “despite diligent efforts”
      2. D’s “recent discovery of material, prior art despite earlier diligent search”, but this should be more difficult to show than the seeming equivalent for P, because prior art by its very nature would have been publicly accessible (at least in the “theses cases” sense) at the relevant time
      3. One basis for good cause can be laid in earlier claim charts by explicitly noting specific missing information, including material not yet produced in ongoing discovery
    9. New products — distinguish among:
      1. Newly-released products
      2. Older products of which P with more diligence could have learned
      3. Products of which P could not have reasonably learned (e.g. alpha/beta tests, one-off custom products, offers for sale, bids, demos, etc.)
      4. Hidden non-product instrumentalities (e.g. manufacturing process)
    10. “Diligence”:
      1. “Diligence” includes systematic mining of public information, as in a pre-filing investigation reasonable under Rule 11
      2. Disclose all information reasonably available (Genentech v. Univ. of Penn.), but of course not information genuinely in others’ sole possession (STMicroelectronics v. Motorola)
      3. “Diligence” also corresponds to the “reverse engineering or its equivalent” requirement for PICs
      4. Entirely delaying (non-initial) contention charts, due to incomplete production during discovery, is not generally viewed as “diligent”
      5. “Diligence” also applies to material uncovered in discovery, particularly when using discovery materials to turn PIC into IC (e.g. Diagnostic Systems v. Symantec)
    11. Cases regarding claim chart amendments, good cause, and diligence
    12. Doctrine of equivalence, obviousness, and claim chart amendments:
      1. Many claim-chart amendment cases concern belated attempts to add DoE and obviousness theories
      2. Despite being ranked as “crowning glories” of patent law, these theories can be last-ditch efforts in a case, the need for which is not earlier considered
      3. Also see DoE section on whether bare recitation of “function way result” mantra in PIC is a sufficient “hook” should DoE later become necessary
      4. May need to specify DoE in initial infringement contentions; see e.g. Garmin v. TomTom
    13. Claim chart amendments & discovery:
      1. Sometimes material recently produced in discovery will be used as a mere rationale for amending charts which the party now realizes are deficient for reasons unrelated to newly-discovered material
      2. The production of a document in discovery does not in itself create good cause for amendment; e.g. produced documents which were earlier publicly available, or which are now being relied upon as basis for motion to amend, but where relied-upon facts match those earlier publicly available
    14. Claim chart amendments & Markman claim construction ruling:
      1. A central purpose of claim charts is to avoid the “shifting sands” or “musical chairs” approach to patent litigation (significant changes post-Markman to invalidity or infringement theories); see O2 Micro v. Monolithic Power Sys.
      2. If “good cause” for amending a claim chart also includes an unfavorable Markman ruling, this would appear to undermine this central purpose
      3. However, most LPRs view “a claim construction by the Court different from that proposed by the party seeking amendment” as an example of good cause for amending ICs
      4. This should not be viewed as a blanket endorsement of post-Markman musical chairs
      5. One valid reason to amend claim charts after Markman ruling is to provide 112(f) means-plus-function analysis when original chart did not view limitation under 112(f)
      6. A Markman ruling can also necessitate previously-unnecessary DoE or obviousness charting
    15. Timing/scheduling of claim charts with respect to discovery period, Markman hearing, and expert reports:
      1. Do not wait for Markman claim construction ruling to do (non-initial) IC (e.g. Townshend v. Broadcom); adopt some reasonable claim construction
      2. As noted above, do not use lack of perfect information as rationale for missing IC deadline
      3. Difficult syncing among expert report deadlines, rebuttal report deadlines, IC deadlines, Markman, and close of discovery
    16. Potentially dire results of missing IC deadlines, including failure to fix inadequate ICs by deadline (e.g. H-W v. Apple; Computer Acceleration v. Microsoft)
    17. Party’s attempts to use expert’s charts to “back-fill” or “back-door” deficiencies in party’s charts (e.g. Revlon v. Estee Lauder; Oracle v. Google)
    18. Court often turns A’s motion to strike B’s inadequate chart as a court order (sometimes multiple orders) that B amend its claim charts within 15 or 30 days
    19. “Death penalty” rare
  2. Experts & claim charts
    1. Expert claim charts are different from party’s claim charts
    2. Expert claim charts covered under FRCP 26(a)(2), FRE 702-705, Daubert; not under LPRs re: infringement/invalidity contentions
    3. Generally minimal LPR coverage of expert reports, apart from claim construction experts
    4. FRCP requirement that expert disclose opinions, basis, methodology is often met using a claim chart within, or attached to, the expert report
    5. Since non-infringement or validity opinions need not prove up every limitation, expert may use prose rather than chart to focus on the few disputed limitations
    6. Expert who merely copies or adopts party’s claim charts: often a bad idea, but if do, at least be explicit and don’t deny copying (IPPV v. Echostar)
    7. Expert whose own claim chart and/or expert report differs materially from party’s charts, but who attaches party claim chart and/or “incorporates by reference”
    8. Attachments to report or chart showing testing, experiments, reverse engineering: not only output, but information on tests themselves (e.g. test scripts)
    9. Rare issues of testifying expert “reliance” upon consulting expert; testifying expert typically replicates subset of consultant’s work which forms basis for expert opinions
    10. Scheduling of expert reports vis-a-vis party claim charts, Markman, discovery: see amendments chapter
    11. Party sometimes attempts to use expert claim chart to back-fill or “backdoor” inadequate party chart, when amendments would be untimely
    12. Expert report amendments: practice of leaving rudimentary or vague “hooks” in report (e.g. DoE without separate analysis of function, way, and result), to enable later elaboration if necessary, while attempting to minimize undue prejudice to other side
    13. Expert asserts “reserve right to amend,” without considering issues of good cause, diligence, or undue prejudice
    14. Rebuttal reports
    15. Expert report duty to supplement
    16. Interaction of expert infringement/invalidity opinions with claim construction opinions
    17. In addition to expert reports incorporating claim charts, also expert chart-related affidavits and declarations
    18. Expert declarations on omissions or deficiencies in other side’s claim chart (distinct from expert opinions on errors in other side’s chart)
    19. Expert declarations providing material for party’s claim chart: testing/experiments; inherency; PHOSITA knowledge; motivation to combine
    20. Benefits and disadvantages of retaining consulting expert early to help with PICs, rather than present experts with fait accompli (“the train has left the station”)
    21. A certain expert tendency towards conclusoriness, e.g. obviousness (“it’s obvious”); tech person oddly fails to thoroughly parse words into constituent parts, or thinks that’s “just lawyer stuff,” and that can get away with “based on my experience, ipse dixit, it’s obvious”
    22. A certain expert tendency to gloss over dating or fail to adopt proper time frame, e.g. states “it’s well known that” rather than “at the relevant time it was well known that”
  3. Interaction of claim charts and remedies
    1. Injunction, especially TRO or PI, may under eBay v. MercExchange require showing that patent holder practices the invention: see working/practices charts
    2. Enforcement of earlier injunction (contempt): chart showing that current product is without colorable differences from the enjoined product: see “Comparing what to what?” chapter
    3. Blocking importation at ITC requires showing technical prong of domestic industry: see DI charts
    4. Damages period: getting dates right, showing earliest possible date, but not too early; see Analyzing chapter
    5. Lost profits: showing tech ability to satisfy demand, from working/practicing chart
    6. Entire market value (EMV) rule, and using facts cited in infringement chart, in comparison to product as a whole, to show percentage relationship of invention to accused product
    7. Argument that P’s invention is incapable of commercial use without D’s numerous additions and modifications: “improved performance” is still improvement, but can reduce damages
    8. Willful infringement (treble damages):
      1. Showing continued sale of same product, after SJ or partial SJ (e.g. Sloan Val v. Zurn)
      2. Using claim chart in attorney’s opinion memo to show lack of willfulness
      3. Using claim chart in demand letter to show willfulness (but also as basis for declaratory judgment)
    9. Attorney fees, especially for frivolous case: Preliminary or initial infringement contentions (PICs) reflect pre-filing investigation, covered under Rule 11
    10. Remember, Rule 11 covers D as well as P; e.g. attorney fees for kneejerk counterclaim with rudimentary boilerplate claim chart (e.g. View Eng. v. Robotic)
  4. Gamesmanship
    1. “Games litigants play”
    2. Defendants as well as plaintiffs (abusive practices not merely by NPEs, “trolls”)
    3. Shifting sands, musical chairs, Whack-a-Mole
    4. Fishing expeditions
    5. Hide the ball
    6. Bury them in paper; death by a thousand papercuts
    7. “Don’t do the other side’s job for them”
    8. “You go look”
    9. “It’s good enough for ’em”
    10. Form over function: “you didn’t say Simon Sez”
    11. Defendant insists on plaintiff busywork/makework
    12. Reasons for gamesmanship, including learned cynicism; associate attorney fears; testosterone poisoning
  5. Claim charts outside the US
    1. UK IPEC (likely necessary to break claim into “integers” in a table or chart)
    2. France: Interaction of infringement contentions with Saisie-contrefaçon
  6. Some underlying conceptions
    1. Why this chapter comes towards the end, not the beginning
    2. “Metes and bounds” vs. gist or core
    3. Infringement/invalidity semi-mirror image; P & D’s reversed AND/OR goals
    4. Independent/dependent claim relationship, including how dependent claims affect independent as well as vice versa
    5. Limitation, “integer,” element, step, part, component
    6. Sub-limitations vs. features/attributes within limitations
    7. Preconditions vs. limitations
    8. “Whereby” vs. “wherein”
    9. Connectives
    10. Instrumentality
    11. Embodiment vs. enablement
    12. Function/purpose/role vs. structure/way/implementation
    13. Method/process vs. device/apparatus vs. system vs. medium
    14. Making vs. using vs. selling/offering/importing
    15. Latency and capability
    16. Inherency
  7. Conclusion; patent claim charts as an example of:
    1. Forensic classification/categorization
    2. Non-holistic matching/comparison on specific parts/elements/attributes
    3. Aligning facts (especially technical/scientific facts) with law
    4. Modern property line/boundary drawing/testing

APPENDIX: SELECTED PATENT CASES RELATING TO CLAIM CHARTS

  1. Court of Appeals for the Federal Circuit
  2. N.D. California
  3. E.D. Texas
  4. Other districts
  5. International Trade Commission (ITC)

[Also see chapter outlines in Source Code & Software Patents: A Guide to Software & Internet Patent Litigation for Attorneys & Experts: chapter 7 on initial or preliminary infringement contentions; chapter 26 on infringement & invalidity contentions. The Claim Charts book covers patent litigation generally, albeit with an emphasis on software-related patents.]