Patent Procurement and Strategy for Business Success Part II: Claims – Targeting the Right Infringers

By Reginald Ratliff
June 17, 2021

“To target the right infringers, the claims must implicate infringers of inventions that are important to the company’s current and future success.”

StrategyTo protect the inventions that are important to a company’s current and future success, the claims of the patents covering those inventions must accurately define the subject matter that is regarded as the invention and target the right infringers. Drafting claims that accurately define the subject matter that is regarded as the invention requires the crafting of claims to have metes and bounds that precisely circumscribe the subject matter which is regarded as the invention. This can be done by constructing independent claims such that the subject matter regarded as the invention forms the axis around which independent claims are structured. Using this approach, the content of the body of the independent claim is limited to the subject matter that has been identified as that regarded as the invention and any subject matter that is needed to support that subject matter. These subject matter parts are the elements that are needed to accurately define the subject matter protected by the patent. Organizing these elements into patent claim format with the elements recited as broadly as possible provides the fullest measure of protection to which the applicant is legally entitled. This process helps to ensure that those who engage in infringing activity related to the inventive subject matter are implicated by the claim for infringement.

To target the right infringers, the claims must implicate infringers of inventions that are important to the company’s current and future success. Thus, the claim drafter must know what these inventions are and the types of infringers that are likely to infringe those inventions. These can include inventions that the company identifies as important to the current and future success of the company, the commercial embodiments of such, inventions that prevent design around of such, inventions that cover improvements of such, and inventions that cover any missing technologies that support the operation of such, etc. Targeting the infringers of these inventions enables the building of patents, networks of patents, and/or portfolios that target infringement of important inventions and countermeasures (design arounds, improvements, alternatives, etc.) intended to avoid infringement of such. This can deprive competitors of an opportunity to acquire patent rights in the technology space. Importantly, it can operate to isolate competitors from technology in a manner that can be advantageous. Consequently, the right infringers are those who would make, use or sell the inventions covered by these types of patents that can be of significant importance to the success of a company.  

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Consider the Claims

With the foregoing in mind, consider a manufacturer of manual screwdrivers that has developed a technology that includes a light-emitting component that is coupled to a screwdriver shaft that directs light toward the screwdriver tip. Moreover, consider that this technology has been identified as being important to the success of the company. Using the above-discussed approach, to target infringers of the invention in a manner designed to prevent design around the following claim can be drafted:

  1. A screwdriver comprising:

a drive tip;

a shaft coupled to the drive tip; and

a light-emitting component coupled to the shaft that directs light toward the drive tip.

The foregoing claim is derived organically from the inventive subject matter which provides the axis around which the claim is structured. In particular, from a recitation of the subject matter considered to be inventive “a light-emitting component coupled to the shaft that directs light toward the drive tip” the claim elements “a drive tip” and “a shaft coupled to the drive tip” are derived to provide antecedent support for the features “drive tip” and “shaft” recited therein. Then the inventive subject matter element and the derived subject matter elements are organized into standard claim format with the claim being directed via the preamble to a screwdriver. In this manner, the claim’s metes and bounds are crafted to precisely circumscribe the inventive subject matter. As such, the limits or scope of protection for the subject matter is accurately defined by the claim.

The fact that the claim accurately defines the scope of protection for the subject matter regarded as the invention helps to ensure that infringers of the subject matter regarded as the invention operate squarely within the “crosshairs” of the claim. In particular, one who makes, uses, or sells a screwdriver with the claimed features can be reasonably expected to infringe the claim.

Consequently, the right infringers are targeted by the claim because the claim implicates those who would infringe inventive subject matter that is considered important to the company’s current and future success. Claims structured as claim 1 is structured make it difficult for competitors to design around because the invention cannot be practiced without all the claimed elements. As such, the right infringers are also targeted by the claim because those who desire to appropriate the essence of the invention while circumventing the claim language (design around) are thwarted.

Indeed, the application drafter should consider drafting claims using the process described above, to accurately target the types of competitive countermeasures that competitors can use to avoid infringement of claim 1, or to obtain an advantageous patent position, with respect to the technology covered by claim 1, e.g., design arounds, modifications, improvements, alternatives, missing technologies, alternative uses, etc. Such claims can be suitable for an instant application or a separate application. Targeting competitive countermeasures can provide strategic advantages (warding off infringers, isolating competitors, etc.) that can be useful in devising and executing plans for achieving business objectives.

In general, a claim structured as claim 1 is structured (without elements that can be eliminated) provides the broadest scope of protection that is legally available for an invention. However, obtaining claims that provide the broadest scope of protection that is legally available to an inventor can be difficult because, in practice, many examiners are reluctant to approve an application for allowance unless its claims are amended. Therefore, in drafting a patent application, it is good practice to include claims that both provide the fullest measure of protection that is legally available and claims of narrower scope. The broadest claims should not be overly broad (they should be sufficiently narrow to distinguish over the prior art but should be as broad as possible in other respects). The narrower claims can provide planned fallback positions related to important commercial embodiments.

Consider in the above-noted case that the examiner examining the application, including claim 1 insists that a minor amendment is needed to clarify the structure of the screwdriver in order to overcome a combination of references. Furthermore, consider that applicant’s representative, in response to the examiner, proposes an amendment intended to result in a claim that continues to target infringers of commercial embodiments, as follows:

  1. A screwdriver comprising:

a drive tip;

a shaft coupled to the drive tip;

a light-emitting component coupled to the shaft that directs light toward the drive tip; and

a handle coupled to the shaft.

The applicant’s representative’s strategy to amend the claim, as is shown above, can provide a suitable fallback position if the applicant believes that the amended claim provides sufficient protection for commercial embodiments. In the instant case, because most screwdrivers are likely to include a handle, the claim would likely cover such commercial embodiments. Thus, the above-shown amendment may be considered by the applicant to cause an acceptable  narrowing of the scope of protection that is provided by the claim.

Beware the Design Around

However, companies must be vigilant with regard to the risk of design around initiatives that can result in the appropriation of technology that is important to a company’s current and future success. Consider the case where a company Y applies for and is granted a patent for the invention covered by amended Claim 1 above that includes claim elements A+B+C+D. Furthermore, consider that company Z, a manufacturer of bits for power devices, seeks to use technology that includes some of the elements of company Y’s patent and at the same time avoid company Y’s patent. The most straightforward way for company Z to design around Claim 1 is to design a product that does not include an element of Claim 1, for example, element D (“a handle coupled to the shaft”). In this case, the product that company Z designs is a bit that includes a light-emitting component that is coupled to a shaft of the bit that is to be used with a hand-held power device. This design around could prove successful if company Y did not seek to protect the invention covered by the original claim with elements A+B+C such as through the filing of a continuation application. In particular, as is, Claim 1 of company Y’s patent could not be used to prevent company Z from making, using, or selling the product with only elements A+B+C because infringement requires that an infringing product include all of the elements of an alleged infringed claim.

Let us further consider that company Z moves to establish a patent position in this technology space by obtaining patent protection for a device with features as set-forth in the following claim:

  1. A bit comprising:

a drive tip;

a shaft coupled to the drive tip;

a light-emitting component coupled to the shaft that directs light toward the drive tip; and

a light-emitting component controller coupled to the light-emitting component.

If a patent that includes this claim issues, it would give company Z a patent position with regard to the claimed technology that might have been obtained by company Y. The utilization of the concept covered by the patent could have been identified by methodically considering operating environments and/or uses for the invention as a part of the multi-dimensional invention framing practice described herein (to identify different important context or applications in which the invention could be used and that should be covered by an instant or other application). The consequences of a failure to identify and obtain patent protection for inventions such as this can include missing opportunities to open additional business or product lines, develop additional sources of income such as through licensing, or obtain a valuable means of attracting collaborations that can be advantageous to the company. For example, strategic collaborations with the right companies can ward off expensive litigation. In particular, a collaboration with a company that a potential attacker may have a valued relationship with may prevent that attacker from attacking because of a desire to avoid straining their relationship with the company. In other cases, even if there is no relationship with the company, a potential attacker may be dissuaded because it is not in their best interest to risk a fight with the company. As such, targeting the right infringers can involve identifying infringers by considering different uses of the inventive concept.

>>>> CONTINUE READING <<<< In the final article in this series, we will examine prosecution strategies and patent strategies for businesses that can lead to favorable outcomes for applicants and the long-term success of companies.

 

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Copyright:Frank-Peters 

The Author

Reginald Ratliff

Reginald Ratliff is a partner with Vanguard/IP, LLP.. His technological experience includes software systems, semiconductor process technology, microprocessors, payment systems, artificial intelligence, cloud-based systems, consumer electronic products, mobile devices, digital systems, analog systems, communication networks, storage devices, and other electronics and computer related technologies.

Prior to founding Vanguard/IP LLP, Reg was a Shareholder at Schwabe, Williamson & Wyatt, Partner at Hanley Flight & Zimmerman LLC as well as Senior Counsel at Womble Carlyle Sandridge & Rice LLP.
He also worked as a Patent Examiner at the USPTO for 11 years, examining applications in the electrical arts and receiving 11 special achievement awards.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 11 Comments comments.

  1. John June 17, 2021 8:27 am

    Can company A draft claims to encompass the product of company B and then sue company B for patent infringement after the patent is allowed even if company A does not manufacture the product?

  2. Anon June 17, 2021 1:26 pm

    John,

    Your question is more or less directed to the concept of a patent as a negative right.

    By that, the easiest way to understand it is that there is NO requirement for a patent holder to make anything. Any such ‘making’ is considered a positive action. Patents do NOT provide for positive actions.

    Another easy way to understand this is to think of an improvement patent (of which, the very large majority of patents are such).

    Let’s say Mr. Better see’s a still-under-patent item invented by Mr. Good. (it is not material at all whether Mr. Good makes what is covered by his patented innovation).

    Since there was no ‘making,’ we can envision this happenstance to come about because Mr. Better happened to be availing himself of one of the benefits of the patent system and reviewing the promotional material of published patents in a field of interest.

    Upon reading of Mr. Good’s patent, Mr. Better realizes (invents/discovers/ or any such like term) an improvement and sets out to patent that improvement himself.

    He succeeds in due course, and is awarded his own patent. Mr. Good’s patent is still in force.

    Can Mr. Better “make” an item that would be protected under his own patent?

    Let’s say in this case that the improvement DOES require a base of Mr. Good’s protected innovation.

    The answer then is “NO,” even though Mr. Better has his own patent, he may NOT engage in a making due to the fact that he would have to violate someone else’s negative patent rights.

  3. Pro Say June 17, 2021 8:06 pm

    Thanks Reginald — good stuff.

    “Organizing these elements into patent claim format with the elements recited as broadly as possible provides the fullest measure of protection to which the applicant is legally entitled.”

    Sadly, as we repeatedly see from many judiciary decisions, such a “minimalist” claiming approach with the independent claim(s) can doom all the claims to being sunk under 101.

    Because the CAFC especially just loves treating the shortest (and therefore normally the broadest) claim(s) as being “representative” or “illustrative,” they can more easily improperly “gist” such claims down to an alleged abstract idea.

    And we all know what happens then.

    My suggestion? Consider writing claim one with just as many limitations as the specification can 112 support. Treat it as the ultimate dependent claim. Get for your broadest scope / coverage with others of your claims.

    Just not with claim 1.

  4. Anon June 18, 2021 7:14 am

    Pro Say,

    Your pro se nature is showing. Any claim depending from your now diminished scope claim 1 will further diminish the scope. Any other independent claim will become the representative claim.

    The “other than claim 1” approach will not work.

    For various reasons, representative claims other than claim 1 occur much more than seldom.

  5. Pro Say June 18, 2021 9:49 am

    Anon,

    “Any claim depending from your now diminished scope claim 1 will further diminish the scope.”

    But of course.

    To insure clarity my friend, in this approach, claim 1 would stand alone — there would be no dependents from such a “minimal scope” claim. Load up claim 1 with everything your disclosure 112 supports.

    Given its representative-claim usefulness in any 101 battles, the potential excess claim fee(s) such an approach may engender is well worth any such additional cost.

    Diminished scope claims = better defense against 101 attacks.

  6. John June 18, 2021 10:30 am

    @Anon at 2: What if company B does NOT have a patent on their product on which company A gets a patent on?

  7. Anon June 18, 2021 2:00 pm

    Pro Say,

    Two thoughts:

    1) to your immediate tactic of Claim 1 (as first claim) being such a detailed full layout, your attempt will (and has – generally) fail as it would be a non-consequential move to simply go to the next independent claim, one that is NOT so ‘rolled up.’

    2) your comments though DO remind me of a slightly different strategy – one more for Continuation practice. There is a school of thought (I ascribe to- but I am flexible with it based on how client needs may interface) that actually sets out to obtain a first patent with claims as decked out as possible. This is done mainly to minimize prosecution history estoppel. It is after that first grant is obtained, that the larger wider (but still deserved) scope can be fought for in the children applications.

  8. Anon June 18, 2021 2:07 pm

    John,

    You seem to be indicating a situation in which prior art exists (prior art is NOT limited to patents) for what company A is doing.

    IF company B cannot (for whatever reason) properly show that its product IS prior art (there are nuanced reasons why such may be), then company B may well find itself – and deservedly so – unable to continue to “Positively” do what it had previously done in the face of the patent to company A.

    This has to do with the deliberate aspect of patent law being a Quid Pro Quo sharing with the public.

    It is always optional to enter the patent system so as to avail oneself of the benefits of such Quid Pro Quo.

    If one chooses not to, that of course is their choice. But such a choice has consequences. If with that choice, one also “hides their light under a bushel” (and engages in one of the nuanced manners in which Company B does NOT create a prior art condition), then they have CHOSEN to be at the mercy of any later entity that does chose to share with the public the aspects of the innovation at point.

    This is as should be – and as chosen to be by the founders of this country.

  9. Pro Say June 18, 2021 8:33 pm

    “fail as it would be a non-consequential move to simply go to the next independent claim, one that is NOT so ‘rolled up.’”

    Anon, who are you suggesting would be doing the “simply go[ing]?”

    Examiner? PTAB? Dist Ct? CAFC?

    Indeed, if need be, the patent owner can themselves preempt any such “simply going” by whomever by expressly designating claim 1 as being representative / illustrative of the claims at issue (at least for the 101 analysis).

    Which raises the question: Have you (or any other reader) ever used / seen where (at least) one claim is designated representative / illustrative for one condition of patentability (whether 101, 102, 102, or 112) . . . with (at least) one claim is designated representative / illustrative for a different condition?

    In some 20 years in the patent trenches, though I’ve never seen such, I can’t come up with a reason why it couldn’t be utilized / wouldn’t be viable.

    Any thoughts?

    “It is after that first grant is obtained, that the larger wider (but still deserved) scope can be fought for in the children applications.”

    This is (also) an excellent approach. Take what you can (hopefully) quickly and easily get with a first patent, then fight for everything you believe you’re entitled to with the 2nd, 3rd, etc.

  10. Marco June 19, 2021 9:14 am

    The rising level of “noise” in patent dialog on social media will soon make it almost impossible to have constructive dialog.

    This is like somebody pointing out to an audience of brain surgeons that the brain needs adequate oxygen to remain a functioning organ. Reminds me of all that nonsensical stuff about so-called “patent trolls,” fueled by public ignorance of a core precept of our patent system that the patentee has never had to be commercially practicing the claimed invention in order to properly license the patent or enforce the patent against infringers. Look at DuPont, probably one of the the biggest “patent trolls” in history, and a bedrock of US industry and capitalism.

    No disrespect intended, but this is just more sophomoric babble.

  11. Anon June 20, 2021 8:55 am

    Indeed, if need be, the patent owner can themselves preempt any such “simply going” by whomever by expressly designating claim 1 as being representative / illustrative of the claims at issue (at least for the 101 analysis).

    A patent holder may propose such a position, but it will (always) be up to the adjudicator (at any court or pseudo-court level) to actually make the decision.

    I cannot see an attempt — especially at an eligibility contested point — to state a far more detailed claim as being ” representative / illustrative” of all claims.

    You do have to remember that patent holder’s counsel has ethical restraints, which include honesty and forthrightness with tribunals.

    If on the other hand, you (the Royal You) pursue this on a pro se basis, you will also be reminded by the court that just because you want to employ such a tactic, that the court need not grant you your wish.