anatomy of a patent

The Anatomy of a PatentThe Anatomy of a PatentUnderstanding the legal vs. technical significance of claims,Understanding the legal vs. technical significance of claims,

specifications and drawings in different contexts specifications and drawings in different contexts

DUANE R. VALZDUANE R. VALZ~ Guest Lecture ~ ~ Guest Lecture ~

U.C. Berkeley (CET) - IEOR 190GU.C. Berkeley (CET) - IEOR 190G

February 20, 2008February 20, 2008

Copyright © 2008 Duane R Valz. All Rights Reserved 2

TopicsTopics►Basic Overview of IP LawBasic Overview of IP Law►Basic Overview of Patentability Basic Overview of Patentability

RequirementsRequirements►Anatomy of a PatentAnatomy of a Patent►Patents in action: The Burst LitigationsPatents in action: The Burst Litigations►Follow-on ReadingFollow-on Reading►Q and AQ and A


What is Intellectual Property?What is Intellectual Property?

► "Intellectual property" ("IP") is a catch-all term "Intellectual property" ("IP") is a catch-all term that includes patents, trademarks, copyrights, that includes patents, trademarks, copyrights, and trade secrets. and trade secrets.

► In the most general terms, IP is any product of In the most general terms, IP is any product of the human mind which the law protects against the human mind which the law protects against unauthorized use by others.unauthorized use by others.

► "Congress shall have power...to promote the progress of "Congress shall have power...to promote the progress of science and useful arts by securing for limited times to science and useful arts by securing for limited times to authors and inventors the exclusive right to their authors and inventors the exclusive right to their respective writings and discoveries." Article I, Section 8 respective writings and discoveries." Article I, Section 8 U.S. Constitution.U.S. Constitution.


Why is IP Important?Why is IP Important?►Fend off Aggression from CompetitorsFend off Aggression from Competitors►Higher Value ProductsHigher Value Products►Negotiation Leverage with Suppliers & Negotiation Leverage with Suppliers &

CustomersCustomers►Deal Leverage for Acquisitions or SpinoutsDeal Leverage for Acquisitions or Spinouts►Stronger Market PositionStronger Market Position►Better Access to CapitalBetter Access to Capital►Prestige for Company & Its EmployeesPrestige for Company & Its Employees


Key Areas of IP for Key Areas of IP for EngineeringEngineering

►PATENTSPATENTS Broad Protection for Technology that must Broad Protection for Technology that must

be shared with public and, as a result, could be shared with public and, as a result, could easily be learned and duplicatedeasily be learned and duplicated

►TRADE SECRETSTRADE SECRETS Variable Levels of Protection for Variable Levels of Protection for

Information, Techniques and Know-How that Information, Techniques and Know-How that must be kept confidential in order to be must be kept confidential in order to be valuablevaluable


Reasons for Understanding Reasons for Understanding PatentsPatents

► Understand state of art in field Understand state of art in field ► Ascertain room for innovation in fieldAscertain room for innovation in field► Obtain better understanding of competitors’ Obtain better understanding of competitors’

products – what legally protected features to products – what legally protected features to avoid avoid

► Avoid infringement of other companies’ patents Avoid infringement of other companies’ patents when designing one’s products and serviceswhen designing one’s products and services

► Conduct prior art searching to ‘reality check’ Conduct prior art searching to ‘reality check’ novelty of an inventionnovelty of an invention

► Make informed licensing, joint development and Make informed licensing, joint development and other corporate transactional decisionsother corporate transactional decisions

► Obtain better understanding of strategic Obtain better understanding of strategic business optionsbusiness options


Patents – Subject MatterPatents – Subject Matter

► Any person who “Any person who “invents or discovers any new invents or discovers any new and useful process, machine, article of and useful process, machine, article of manufacture, or composition of matter, or any manufacture, or composition of matter, or any new and useful improvement thereof, may new and useful improvement thereof, may obtain a patentobtain a patent,” subject to the conditions and ,” subject to the conditions and requirements of the federal patent lawsrequirements of the federal patent laws

► Interpretations of the statutory requirement by Interpretations of the statutory requirement by the courts have more carefully defined the the courts have more carefully defined the limits of patentable subject matter; thus it has limits of patentable subject matter; thus it has been held that been held that laws of naturelaws of nature, , physical physical phenomenaphenomena, and , and abstract ideasabstract ideas are *not* are *not* patentable patentable


Patents – Standards for Patents – Standards for ObtainingObtaining

►An invention must be An invention must be “novel”“novel” and and “non-“non-obvious”obvious” in order to be patentable in order to be patentable

►NOVELTY:NOVELTY: an invention cannot be patented if: “(a) the an invention cannot be patented if: “(a) the

invention was known or used by others in this invention was known or used by others in this country, or patented or described in a printed country, or patented or described in a printed publication in this or a foreign country, before publication in this or a foreign country, before the invention thereof by the applicant for the invention thereof by the applicant for patent,” or “(b) the invention was patented or patent,” or “(b) the invention was patented or described in a printed publication in this or a described in a printed publication in this or a foreign country or in public use or on sale in foreign country or in public use or on sale in this country more than one year prior to the this country more than one year prior to the application for patent in the United States . . .” application for patent in the United States . . .”


Patents – Standards for Patents – Standards for ObtainingObtaining

► An invention must be An invention must be “novel”“novel” and and “non-“non-obvious”obvious” in order to be patentable in order to be patentable

► NON-OBVIOUSNESS:NON-OBVIOUSNESS: Even if the subject matter sought to be patented is Even if the subject matter sought to be patented is

not exactly shown by the prior art, and involves one not exactly shown by the prior art, and involves one or more differences over a known invention or idea, or more differences over a known invention or idea, a patent can still be refused if such differences a patent can still be refused if such differences would be obvious would be obvious

An invention is not patentable if it would have been An invention is not patentable if it would have been “obvious to a “obvious to a person having ordinary skill in the artperson having ordinary skill in the art” ” (i.e., the area of technology related to the invention)(i.e., the area of technology related to the invention)


The Issued PatentThe Issued Patent

► Takes 1½ to 5+ years for a patent to issue Takes 1½ to 5+ years for a patent to issue from time of original application filingfrom time of original application filing

► Is effective as a property right from date of Is effective as a property right from date of issuanceissuance

► Confers exclusive right to owner to Confers exclusive right to owner to makemake, , have madehave made, , useuse, , sellsell, , offer for saleoffer for sale or or importimport patented invention or patented invention or products/services incorporating invention products/services incorporating invention (i.e., right to exclude others from doing such (i.e., right to exclude others from doing such things)things)

► Typically, patents endure for 20 years from Typically, patents endure for 20 years from the date of earliest application filingthe date of earliest application filing


Focus of Original Burst PatentFocus of Original Burst Patent

An improved video recorder/transmitter with expanded functionality including a capability for editing and/or copying from one video tape to another using only a single tape deck. The increased functionality is realized through the use of analog to digital conversion, signal compression and intermediate storage in an integrated circuit, random access memory. The recorder/transmitter has capabilities to transmit and receive program information in either a compressed or decompressed format over fiber optic lines.

U.S. No. 4,963,995

Filed 12-27-1988

Issued 10-16-1990


Focus of later Burst PatentFocus of later Burst Patent

An improved video recorder/transceiver with expanded functionality ("VCR-ET") including a capability for storing video and video programs in digital format, editing such programs, transferring such programs onto a hard copy magnetic media, and transmitting such programs to a remote location using a second VCR-ET. The increased functionality is realized through the use of analog to digital conversion, signal compression and intermediate storage in an integrated circuit, random access memory. The recorder/transmitter has capabilities to transmit and receive program information in either a compressed or decompressed format over fiber optic lines, conventional phone lines or microwaves.

U.S. No. 5,995,705

Filed 7-18-1997

Issued 11-30-1999


Litigation target of Burst Patents:Litigation target of Burst Patents:Internet audio/video streamingInternet audio/video streaming

Faster than real time

transmission of compressed

content?

Real time playback of transmitted

content


Key QuestionsKey Questions

► From a technology perspective, how relevant is From a technology perspective, how relevant is (1) a late ’80s VCR with ICs allowing for (1) a late ’80s VCR with ICs allowing for digitization and compression of analog content digitization and compression of analog content for more efficient handling, to (2) late ’90s for more efficient handling, to (2) late ’90s technology for streaming digital content via the technology for streaming digital content via the Internet to PCs in a manner that allows for Internet to PCs in a manner that allows for efficient playback?efficient playback?

► In the context of the Burst litigations, how can In the context of the Burst litigations, how can patents initially directed to this late ’80s patents initially directed to this late ’80s technology be made legally relevant to late ’90s technology be made legally relevant to late ’90s streaming technology?streaming technology?

► Herein lies the crux of the rest of our discussion!Herein lies the crux of the rest of our discussion!


Goal of our session: understanding how Goal of our session: understanding how we get from Point A to Point Bwe get from Point A to Point B

?


Front Page BasicsFront Page Basics► U.S. No. 5,164,839U.S. No. 5,164,839► ““Method for Handling Method for Handling

Audio/Video Source Audio/Video Source Information”Information”

► Filing Date vs. Issue DateFiling Date vs. Issue Date► Assignee = OwnerAssignee = Owner► Related Application DataRelated Application Data► Technology Class CodesTechnology Class Codes► Prior Art References Cited Prior Art References Cited ► AbstractAbstract► Front Page IllustrationFront Page Illustration


What is the Patent’s What is the Patent’s Specification?Specification?

► The specification must set The specification must set forth the precise invention forth the precise invention for which a patent is for which a patent is solicited, in such manner as solicited, in such manner as to distinguish it from other to distinguish it from other inventions and from what is inventions and from what is old old

► It literally must “teach” one It literally must “teach” one skilled in the art how to skilled in the art how to practice, make or recreate practice, make or recreate the inventionthe invention

► Includes statements re field Includes statements re field of the invention, problem of the invention, problem addressed or solved by the addressed or solved by the invention, and detail invention, and detail regarding the solution regarding the solution comprising the inventioncomprising the invention


What is the Patent’s What is the Patent’s Specification?Specification?

► It must describe completely It must describe completely a specific embodiment of a specific embodiment of the process, machine, the process, machine, manufacture, composition manufacture, composition of matter or improvement of matter or improvement invented, and must explain invented, and must explain the mode of operation or the mode of operation or functional principle functional principle whenever applicablewhenever applicable

► Detailed written description Detailed written description typically corresponds to typically corresponds to illustration(s) of invention illustration(s) of invention and/or prior art through and/or prior art through numerical annotations numerical annotations

► It must set forth the It must set forth the bestbest modemode contemplated by the contemplated by the inventor for carrying out inventor for carrying out the inventionthe invention


Specification - The DrawingsSpecification - The DrawingsColumn 35,164,839


Specification – Preferred Specification – Preferred EmbodimentEmbodiment

Column 35,164,839


Specification – Other Specification – Other EmbodimentsEmbodiments

The embodiments described include means for receiving, storing and transmitting both audio and video signals. However, the invention encompasses apparatus which can store and transmit video signals only and apparatus which can store and transmit audio signals only. An embodiment designed to store and compress audio signals is illustrated in FIG. 4. Referring to FIG. 4, an audio signal source 70 (a tape recorder, microphone, record player, etc.) is coupled to a digitizer and compressor circuit 72, which converts the analog signal to a digital signal and compresses the digital signal in a manner similar to VCU 12 described above. The digital compressed signal can then be stored in a memory 74. Of importance, data from memory 74 can be transmitted by a fiber optic transceiver 76, or by a microwave transceiver 78 at an accelerated rate. …

* * *

In the embodiment of FIG. 4, data can also be loaded from memory 74, via a modem 79 over a conventional phone line 80. Data can also be received from phone line 80, fiber optic transceiver 76 or microwave transceiver 78, loaded into memory 74, and converted to an analog signal by circuit 72, to be listened to via an audio monitor 82, or to be stored on an audio tape cassette 84 or other storage media.

5,164,839

Column 12, lines 12-45


What are the Patent’s What are the Patent’s Claims?Claims?

► The specification must The specification must conclude with a claim or conclude with a claim or claims particularly pointing claims particularly pointing out and distinctly claiming out and distinctly claiming the subject matter which the subject matter which the applicant regards as the the applicant regards as the invention invention

► The portion of the patent The portion of the patent setting forth the claim or setting forth the claim or claims is an important part claims is an important part of the patent, as it is the of the patent, as it is the claims that define the scope claims that define the scope of the legal protection of the legal protection afforded by the patent and afforded by the patent and around which questions of around which questions of infringement are judged by infringement are judged by the courts the courts

5,164,839 Column 13


What are Patent Claim What are Patent Claim Types?Types?

4,963,995 Columns 10-11 5,164,839 Column 13


Dependent ClaimsDependent Claims► More than one claim may be More than one claim may be

presented provided they differ presented provided they differ substantially from each other substantially from each other and are not unduly multiplied. and are not unduly multiplied. One or more claims may be One or more claims may be presented in dependent form, presented in dependent form, referring back to and further referring back to and further limiting another claim or claims limiting another claim or claims in the same application. Any in the same application. Any dependent claim which refers dependent claim which refers back to more than one other back to more than one other claim is considered a “multiple claim is considered a “multiple dependent claim.” dependent claim.”

► The claim or claims must The claim or claims must conform to the invention as set conform to the invention as set forth in the remainder of the forth in the remainder of the specification and the terms and specification and the terms and phrases used in the claims must phrases used in the claims must find clear support or antecedent find clear support or antecedent basis in the description so that basis in the description so that the meaning of the terms in the the meaning of the terms in the claims may be ascertainable by claims may be ascertainable by reference to the description. reference to the description.

5,164,839 Column 13


Published Applications vs. Issued Published Applications vs. Issued PatentsPatents

►Most patent applications published 18 Most patent applications published 18 months from filing datemonths from filing date

►Published applications contain Published applications contain information (specification, claims, information (specification, claims, diagrams) as initially fileddiagrams) as initially filed Subject to alteration during examination Subject to alteration during examination

processprocess

►Constitute most up-to-date and often Constitute most up-to-date and often relevant prior artrelevant prior art


Patents & Offensive LitigationPatents & Offensive Litigation

► The The ClaimsClaims of a patent are the most significant for of a patent are the most significant for assessing whether a 3assessing whether a 3rdrd party’s services, product designs, party’s services, product designs, systems, functionality, components or improvements may systems, functionality, components or improvements may infringe the patent holder’s legal rightsinfringe the patent holder’s legal rights

► Even if the Defendant’s service/product features have been Even if the Defendant’s service/product features have been taught by the patent’s specification, what matters is taught by the patent’s specification, what matters is whether any valid claims of the patent “read on” such whether any valid claims of the patent “read on” such service/product features so as to raise infringement service/product features so as to raise infringement concernsconcerns

► In patent enforcement litigation, the technology disclosed by In patent enforcement litigation, the technology disclosed by a patent need not be as sophisticated as, or even enabling a patent need not be as sophisticated as, or even enabling of, the defendant’s technology; as long as each element of of, the defendant’s technology; as long as each element of any valid claim of the patent reads on the accused any valid claim of the patent reads on the accused technology, an infringement case may be successful!technology, an infringement case may be successful!


The $Multi-Million Crux for The $Multi-Million Crux for BurstBurst

► Anyone streaming compressed Anyone streaming compressed rich content to remote users rich content to remote users would be in danger of infringing would be in danger of infringing broad claims like these …broad claims like these …

► Doesn’t matter whether the Doesn’t matter whether the disclosed Burst technology is disclosed Burst technology is outdated and irrelevant to the outdated and irrelevant to the Internet!Internet!

5,164,839 Claim 1


Patents & Litigation DefensesPatents & Litigation Defenses

► Broad patent claims cover more possible Broad patent claims cover more possible implementations of a new invention (including those implementations of a new invention (including those never envisioned at the time of the original invention), never envisioned at the time of the original invention), thereby maximizing chances of 3thereby maximizing chances of 3rdrd party infringement party infringement

► HoweverHowever, the broader an asserted patent’s claims, the , the broader an asserted patent’s claims, the more susceptible it becomes to invalidity challengesmore susceptible it becomes to invalidity challenges

► The The SpecificationsSpecifications of prior art patents (including of prior art patents (including published applications) are the most significant for published applications) are the most significant for assessing the validity of an asserted patent claimassessing the validity of an asserted patent claim

► Can indicate whether an invention lacks novelty, or is Can indicate whether an invention lacks novelty, or is “anticipated”“anticipated”

► Can indicate (either alone or in combination with other Can indicate (either alone or in combination with other prior art) whether an invention is “obvious”prior art) whether an invention is “obvious”

► Operative QuestionOperative Question: Have key features of invention as : Have key features of invention as claimed already been taught by prior art patent(s)?claimed already been taught by prior art patent(s)?


The $Multi-Million Crux for MSFT, Apple & RealThe $Multi-Million Crux for MSFT, Apple & Real

► Are claims such as these, Are claims such as these, dating back to an invention dating back to an invention developed in 1987 and a patent developed in 1987 and a patent filed in 1988, novel and non-filed in 1988, novel and non-obvious relative to what was obvious relative to what was already known at the time?already known at the time?

► What does the prior art reveal What does the prior art reveal about the inventiveness of the about the inventiveness of the Burst patents in the late ’80s?Burst patents in the late ’80s?

5,164,839 Claim 1


Prior Art – U.S. No. 4,506,387Prior Art – U.S. No. 4,506,387► ““Programming-On-Demand Cable Programming-On-Demand Cable

System and Method”System and Method”► Issued March 19, 1985 to Howard Issued March 19, 1985 to Howard

F. WalterF. Walter► ““A programming-on-demand A programming-on-demand

cable system is provided [in] cable system is provided [in] which … [e]ach program is which … [e]ach program is preprogrammed in a memory preprogrammed in a memory device selectable by a host device selectable by a host computer at a central data station computer at a central data station … The host computer in … The host computer in conjunction with other electronics conjunction with other electronics transmits the video program at a transmits the video program at a high non-real-time rate over a high non-real-time rate over a fiber optic line network to a data fiber optic line network to a data receiving station at the user's receiving station at the user's location. The data receiving location. The data receiving station then converts the station then converts the received optical data back to received optical data back to electrical data and stores it for electrical data and stores it for subsequent real-time subsequent real-time transmission to the user's transmission to the user's television set.” television set.”


Prior Art – U.S. No. 4,790,003Prior Art – U.S. No. 4,790,003► ““Message Service System Message Service System

Network”Network”► Issued December 6, 1988 to Gary Issued December 6, 1988 to Gary

D. Kepley, et al.D. Kepley, et al.► ““This invention relates to business This invention relates to business

communication systems and, in communication systems and, in particular, to a message service particular, to a message service system network that interconnects system network that interconnects a plurality of message service a plurality of message service systems and provides a voice mail systems and provides a voice mail message transfer capability message transfer capability between voice mail message between voice mail message service systems. The voice mail service systems. The voice mail message transfer is performed as a message transfer is performed as a computer-to-computer data file computer-to-computer data file transfer operation over high speed transfer operation over high speed data lines. The data file consists of data lines. The data file consists of the digitally encoded and the digitally encoded and compressed voice mail message to compressed voice mail message to which is appended the message which is appended the message sender's name and telephone sender's name and telephone number as well as the message number as well as the message recipient's telephone number. ” recipient's telephone number. ”


The ‘839 Patent in light of the ‘003 (Kepley) The ‘839 Patent in light of the ‘003 (Kepley) PatentPatent

5,164,839 Claim 1

3:7-17

8:26-32

13:29-37


Follow-on ReadingFollow-on Reading

►Summary Judgment Ruling: Burst v. Summary Judgment Ruling: Burst v. AppleApple http://www.burst.com/new/newsevents/20071108_SJ_Ord.phttp://www.burst.com/new/newsevents/20071108_SJ_Ord.p

dfdf

►Complaint for Declaratory Relief: Real Complaint for Declaratory Relief: Real v. Burstv. Burst http://www.burst.com/new/newsevents/2008-01-03_RN_Cohttp://www.burst.com/new/newsevents/2008-01-03_RN_Co

mplaint_for_Declaratory_Judgment.pdfmplaint_for_Declaratory_Judgment.pdf


Wrap-UpWrap-Up

►Questions?Questions?

►Discussion …Discussion …

anatomy of a patent

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