Patent Litigation book

Patent Litigation: An Introduction to Using Patent Claims and Limitations in Disputes over Infringement and Invalidity

 

by Andrew Schulman

This forthcoming book will be based on (but significantly expanded from) a 6-part series which was published by DisputeSoft.com. Contact the author for more information. There is a discussion page at academia.edu .

Summary outline

  • Preface
  • Introduction
  • Chapter 1: Patents, Infringement, and Litigation (or, What is a Patent, Really?)
  • Chapter 2: Patent Claims and Limitations
  • Chapter 3: Carefully Examining a Patent Claim
  • Chapter 4: Using a Patent Claim to Look for Infringement, and as a Tool to Examine an Accused Product
  • Chapter 5: Using a Patent Claim to Look for Invalidity, and as a Tool to Examine Prior Art
  • Chapter 6: Patent Litigation: Plausibility, Pre-Filing Investigation, Claims Charts, and Discovery
  • Conclusion
  • Glossary & Abbreviations
  • Checklists
  • Bibliography
  • Cases Cited

Detailed outline

Preface

  • About the reader (intended audience: associate attorneys; technical consultants; and patent litigation students)
  • About the author (attorney and computer programmer; has worked for 20+ years on factual side of software/network patent litigation; about equally defendants & plaintiffs, including some NPEs)
  • Plaintiff/defendant neutral
  • Largely USA-centric (though see section on international aspects, including import, export, ITC)
  • Largely utility patents
  • The book might have been subtitled “How to get down in the weeds”; the book is definitely for those who want to do that, rather than stay at a 30,000 foot level (though also see lengthy section on patent strategy)
  • Acknowledgements

Introduction

  • Patent claims are tools to do something, not merely passive descriptions of technology
  • Really an entire book focusing on the minutiae of patent claims?; yes, even billion-dollar patent judgments end up being based on a few words in a patent claim
  • The book’s focus is on litigation (how to actually use a patent), rather than on patent prosecution (getting a patent in the first place)
  • Focus on claims, and on the limitations (elements and steps) that make up claims
  • Focus on facts (factual investigation and marshaling facts), more than on patent law as such
  • Focus on technical facts, more than on economic/accounting (though see section on remedies, and interaction of technical & economics experts)
  • Focus on using claim construction as a tool, not simply providing the usual rehash of the “canons” of claim construction
  • Who cares? Why aren’t we talking about weighty issues like “patent reform” and subject-matter eligibility, and instead focusing on seemingly-little things like claim charts?; in part because there are simpler procedural fixes to perceived patent problems (such as unpredictability, or beliefs that patents are “too strong” or “too weak”); Local Patent Rules (LPRs) are more tractable tools for controlling “patent abuse” than is 101.

Chapter 1: Patents, Infringement, and Litigation (or, What is a Patent, Really?)

  • Opening lengthy example of Caltech v. Apple/Broadcom: how do a few patent claims turn into a billion-dollar judgment (albeit one in which the damages amount has now been successfully appealed)?
  • Patents: a negative right to (try to) exclude
  • Patents: enforceable boundaries for inventions
  • Patents have boundaries: what is property?
  • Patents and IP
  • How patents relate to the patent owner’s products: what does it mean for a patent to “cover” a product?; why no “working requirement”
  • Infringement, and the right to exclude
  • Patents are not self-acting, and the “patent police” are not on their way
  • Patent litigation in federal civil court (experienced attorneys can skip this section)
    • Venue & forum shopping
    • Briefly here on other “venues”; ITC; PTAB
    • Trial, and the role of judge & jury
    • Most litigation is pretrial, and most cases don’t go to trial (see section on settlement)
    • Appeals and the CAFC
  • Showing infringement
    • Briefly here on indirect infringement
  • Patent infringement is based on patent claims and limitations
    • Briefly here on design and plant patents, without claims/limitations
    • Some parts of claims that look like limitations are actually non-limiting (preconditions, most preambles)
  • Patent strategy: A claims-based approach
    • Some goals for patents, and for patent litigation
    • Pros: Some reasons behind (or causes for) patent litigation
    • Cons: Some bad reasons for patent litigation, and reasons NOT to litigate
    • Non-litigation uses of patents, and alternatives to litigation
    • Alternatives to patenting
    • Patent valuation: A claims-based approach; see also Remedies below
    • Settlement of patent litigation
    • Patent licensing
    • Pre-litigation patent enforcement
    • Strategy & tactics within litigation, including defense
    • Patent portfolios: quantity & quality
  • Patents: Who cares?
    • Does the patent system function as an incentive to R&D, and to innovation generally?
    • How do patents compare to alternative IP and non-IP incentives to R&D?
    • COVID-19 vaccines as an example of the positive, negative, or neutral role of patents in innovation

Chapter 2: Patent Claims and Limitations

  • A sample patent claim (for printer toner)
    • Dependent claims, and their uses
  • A sample patent claim for a method (for an image-forming method)
    • Other types of patent claims: CBM, system, CRM (media), sequences/structures
    • General distinctions: function vs. structure; device/apparatus vs. process/method, etc.
  • Patent claims are made of “limitations”
    • Limitations are elements/components/parts of devices, or steps of methods/processes
    • Briefly here on sub-limitations (much more in Ch.4 on parsing lengthy/complex/multi-part claim limitations)
  • How a selective parts list marks a patent boundary
  • Patent claims are devices/tools for testing infringement (and for testing their own validity/invalidity)
  • Claim scope’s inverse relation to size/complexity: less is more
  • The role of claim construction in patent litigation
    • Nomenclature, terminology: see Ch.3, 4
    • Relationship of claims to the rest of the patent specification: context/definition, but not “importing”
    • Markman claim-construction hearing
    • Using claim-construction rules (including “canons”) as tools in patent litigation
    • Threading the needle: how broad and narrow scope relate to plaintiff’s and defendant’s postures for infringement and invalidity
    • Plain and ordinary meaning
    • “Canons” of claim construction: “for each and every canon, there is an equal and opposite canon”
    • Inventor as “own lexicographer” with specification as dictionary for claims
    • Claim differentiation, including using dependent claims to understand independent claims
    • The importance of short non-technical words; “whereby” vs. “wherein”
    • The importance of word suffixes: -ed vs. -ing vs. -able
    • The importance of seemingly-vague connectives, such as “based on”
    • Using adjectives to understand claim terms
    • Using small differences between claims, or between claim limitations
    • The (rebuttable) presumption of consistency
    • Using examples and embodiments in the specification
    • Non-limiting claim language, including (usually) preambles, and preconditions
    • The perspective of the PHOSITA at the time of filing
    • Party’s claim construction implied from its infringement posture
    • Intrinsic vs. extrinsic evidence, including the roles of dictionaries and of experts
    • Why broad claim scope is not always good for the patent owner
    • Having fought hard for a particular claim construction, remember to actually USE it in analyzing infringement and invalidity
  • Monitoring the marketplace for patent infringement
    • Why is there no “patent police”?; why is monitoring patent infringement different from what ASCAP/BMI do for music copyright?; perhaps so-called “trolls” function as quasi “patent collection societies”?
    • Which patents to assert from a larger portfolio?; portfolio ranking
    • Who to asset patents against?; finding potential/candidate targets
    • Reasonable pre-filing investigation under Rule 11, Iqbal/Twombly (“plausibility”), and Local Patent Rules (LPRs)
    • Difficulties in acquiring access to possibly-infringing products/services/in-house methods (“instrumentalities”)
    • Reverse engineering (or its equivalent) as a litigation tool for detecting and assessing infringement
    • What to do when detecting infringement is difficult before discovery
    • “Information and belief” and its over-use when publicly-accessible detailed information has not been diligently mined
    • Pre-filing enforcement, the demand letter, and declaratory judgment (DJ)

Chapter 3: Carefully Examining a Patent Claim

  • Treating a patent claim as a parts list…
  • … But not just a parts list
  • What’s in a name?: infringement & nomenclature/terminology
  • Defense; D’s options include:
    • Showing non-infringement (show absence of 1+ elements, ideally from each & every asserted claim)
    • Showing invalidity: anticipation, obviousness, lack of enablement; but: presumption of validity; clear & convincing evidence
    • Inter-partes review (IPR)
    • Claim construction disputes; balancing narrow construction on infringement & broad construction on invalidity
    • Motions to compel, dismiss, exclude, preclude, strike, stay re: P’s pleadings, contentions, experts, evidence, etc.
    • Summary judgment (SJ), including “failure of proof”
    • Declaratory judgment (DJ) actions
    • Reducing damages: royalty rate, royalty base, lost profits, non-infringing alternatives
    • Settlement
  • A simple software patent claim (the book’s major example: “facade server”, and how/why it was selected)
  • Walking through claim limitations
  • “Facade server”: interpreting terms in a patent claim (specific example of using claim construction)
  • The “core” of the claim may not look like much
    • How patent claims change while the PTO is examining the patent application; claim evolution

Chapter 4: Using a Patent Claim to Look for Infringement, and as a Tool to Examine an Accused Product

  • Investigating infringement of a software patent claim
  • Brainstorming search terms (nomenclature, terminology, synonyms, non-limiting examples)
  • A possibly-infringing product
  • Limitation-by-limitation comparison of a patent claim with an accused product
  • Structuring the comparison of a single limitation with a product attribute/feature/element
    • Parsing claims and limitations, including lengthy/complex limitations
    • Sub-limitations, both explicit and implicit
    • Deceptively simple-looking limitations (e.g. “a facade server”; when patentee “acts as his own lexicographer”)
    • Features/attributes/adjectives of limitations
    • Negative limitations, and absences (e.g. with closed “consisting” preambles)
    • Limitations with choices
  • Other possibly-infringing products (this section includes valuable research by GreyB, as a detailed example of a real-world patent-infringement search)
  • “Means for”: so-called functional claiming (finding structural details in the specification)
  • Equivalence (DoE) and the function/way/result (FWR) test
    • Design-around, and its relationships with equivalence (including PHE) and with non-infringing alternatives (NIA)

Chapter 5: Using a Patent Claim to Look for Invalidity, and as a Tool to Examine Prior Art

  • Patent invalidity: how D can pull the rug out from under P’s property
    • How dependent claims intersect with infringement & invalidity
  • Investigating prior art for a software patent claim
    • Alice and the subject-matter validity of software patents
  • What counts as prior art
  • How a patent (claim) is compared with prior art; anticipation; “reinventing the wheel”
  • Prior art already found by the PTO; reading the file wrapper
  • Searching for a negative limitation (required absences) in prior art
  • An extended prior-art example
  • Limitation-by-limitation analysis of a prior-art reference
  • Other prior-art examples (this section includes valuable research by Patspade IP as a further detailed example of a real-world prior-art search)
  • Obviousness
    • Both a mere fall-back position from anticipation, and also the “crown jewel” of the patent system
    • “Motivation to combine”; TSM+
    • The PHOSITA’s perspective
    • Secondary considerations: are they really secondary?
  • On-sale & public use bars: P can trip itself up with its own prior art
  • Lack of enablement as another way to invalidate patents
    • Enablement basics from 35 USC 112(a)
    • What types of information must be disclosed?
    • Enabling the full scope of the claim, including (but not limited to) the claim as construed/asserted in litigation
    • Enablement also required for prior art (except patent owner’s own on-sale, public-use)
    • If “the name of the game is the claim,” why do we care about the spec?; enablement and the underlying purpose of the patent system
    • Does the patent system truly treat disclosure as its ultimate goal?; and, what happened to “best mode”?
    • Do patents actually disclose new information that would be useful to engineers?
    • Are patent disclosures used by engineers?
    • Patents vs. trade secrets
    • The “ostrich position” (deliberate avoidance of reading patents), willful infringement, and indirect infringement
  • Unstable property: unpredictability, and the risk of patent invalidity

Chapter 6: Patent Litigation: Plausibility, Pre-Filing Investigation, Rules, Claims Charts, Discovery, Experts, and Remedies

  • A plausible case
    • Rule 11, reasonable pre-filing investigation
    • “Plausibility” under Iqbal/Twombly
    • Summary judgment (SJ) & “failure of proof”
  • Local Patent Rule (LPR) requirements for infringement & invalidity contentions
    • Explaining and contending
    • Sufficiency of contentions can drive other side’s disclosure requirements
  • Claim charts for analyzing infringement and invalidity
    • See author’s articles and draft book on claim charts
    • Briefly on charts for design patents (Crocs example)
  • Discovery: Getting information from the other side
    • Only briefly here on the major discovery mechanisms: rogs, deps, doc production, etc.
    • This section also covers “informal discovery” and mandatory disclosures under LPRs
    • First diligently mine public information — there’s likely more than you think
    • Protective orders (POs), confidential business info (CBI), and attorney-eyes only (AEO)
    • Third-party subpoenas
    • Discovery requests tailored to what experts will need
    • “Stop and think” (FRCP ACN on discovery) vs. kitchen-sink requests
    • “Careful what you ask for, you just might get it”
    • Using public information to fine-tune formal discovery requests; how internal/confidential info relates to public info (e.g., how confidential source code relates to actual products on the market; how company emails relate to public pronouncements)
    • Discovery mutually-assured destruction (MAD) balance upset by “trolls” (asymmetrical discovery from NPEs)
    • Knee-jerk responses (not every burden is unduly burdensome) are as common as knee-jerk requests (kitchen sink)
  • Experts
    • Technical & economics experts
    • Expert choices: specialist vs. generalist; academic vs. industry; early vs. late (sunk costs vs. fait accompli); single vs. bifurcated (separate infringement and invalidity experts); testifying vs. non-testifying consultant
    • Expert relation to hiring party; witness not “team member”; conduit; ghostwriting
    • Testifying expert relation to consulting expert; pros & cons of consulting experts
    • Daubert, Kumho Tire, FRE 702-705
    • Using Daubert factors to structure report and testimony
    • Falsifiability, peer review, error rate, non-litigation use of method, standards for methods
    • FRCP 26 on expert report; expert affidavits; report timing; rebuttal reports; drafts & “rolling report”; amending reports; materials considers vs. relied-upon
    • Opinions vs. faux-naive “I just let the facts speak for themselves”
    • Conclusory opinions vs. providing basis and methodology, alternate conclusions considered
    • Basis/methodology/experience provide expert opinion’s value, vs. “well, that’s just your opinion”
    • Experience, qualifications, and ipse dixit
    • Weasel words, “consistent with”, degrees of certainty, and “fit”
    • Battle of the experts; legitimate expert disagreement
  • Remedies (ideally, this would be towards the front, not the back, of the book)
    • Injunctions and TRO; eBay v. MercExchange and NPEs
    • Reasonable royalties; Georgia-Pacific factors; importance of royalty base as well as royalty rate
    • Royalties and standards: SSOs, SEP, and FRAND
    • Remedies when the patent covers only part of the product: EMV, SSPPU
    • Patent claim valuation generally: see earlier Strategy section
    • Lost profits, Panduit factors, including absence of NIAs
    • ITC non-importation order, and “domestic industry” (working/practicing requirement)
    • Interaction of technical experts with economics/accounting experts (e.g. tech expert may provide econ expert with list of part numbers to include/exclude in damages calculation)
    • Attorneys fees
    • Litigation funding
    • Patent infringement insurance
  • Multiplicity
    • Multiple claims, multiple patents asserted in a single case
    • Multiple accused products, and choosing “representative instrumentalities”
    • Multiple prior-art references: either obviousness combination, or alternative prior-art references
    • Multiple defendants, and joinder; the problem of so-called “joint” or “divided” infringement; third parties
    • Multiple locations, including multidistrict litigation (MDL)
    • Multiple international jurisdictions (including attempted consolidation of invalidity hearings across multiple patent-granting jurisdictions)
    • Multiple potential claim constructions

Conclusion

  • Recap of major points, themes of book
  • Trends in patent litigation: AI, quantum, blockchain, climate change/sustainable tech?; COVID-19 vaccines
  • Taking some fact-investigation methods here, and applying to other areas of software-related litigation
  • Need for greater IP predictability
  • International aspects of US patent litigation
    • This US-centric book may look narrow/parochial in a few years, if it does not already
    • WTO TRIPS, Europe, UK, China
    • ITC importation actions, and “domestic industry”

Glossary & Abbreviations

Checklists

Bibliography

Cases Cited

This forthcoming book will be based on (but significantly expanded from) a 6-part series which was published by DisputeSoft.com. Contact the author for more information,

 

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