Mining the Patent Specification for Infringement Using Continuations

As patent portfolios age, the core concept of the original claims can be used as a framework for later claims to track what competitors are doing. Using continuations, the core concept of the claims can be modified by broadening (removing aspects from the claims) and narrowing the claims (using the additional disclosure that was not initially the focus of claims in earlier patents).  By doing this, numerous patents and claims of different scope can be drafted over time that are tailored to exactly what your competitors are doing. This can turn a single patent into a formidable patent portfolio that can be difficult and very expensive for your competitors to prevail against.

Finding Forward Citations and Getting Claims Your Competitors Want Using Continuations

With a pending continuation, a patent owner is able to monitor and act on forward citations that surface over time. Forward citations are instances where later filed patent applications cite back to your patent specification.  This is similar to a journal article citing to prior journal articles that  are relevant or otherwise used for background information.  If your patent is a forward citation and is cited as a 102 reference it means that a patent examiner has specifically determined that your patent is a "blocking patent" to the claims sought by the later applicant.  This is powerful and actionable information.

Before Your Patent Issues, File a Continuation!

Given that the first application only covers what is specifically called out in the Claims, it is my strong opinion that a continuation should be filed before the issuance of the patent to protect additional material not encompassed by the first set of Claims.  A continuation is essentially a copy of the non-provisional application, that claims the benefit of the provisional and prior non-provisional applications.  The continuation also contains new patent Claims.  The continuation allows an inventor to continue to claim other inventions in the disclosure with the filing date of the original provisional application.

Starting The Patent Process with a Comprehensive Design Patent Application

Provisional patent applications cannot be converted into design patent applications. Thus, another form of protection an inventor should consider early in the patent process is whether design patent protection would be appropriate for any of its intellectual property.  Design patents cover visual ornamental characteristics of an article of manufacture.  For example, this could apply to the visual design of a product (or portion thereof) or mobile application user interfaces.

Proactive Patent Prosecution

When an inventor starts down the path of obtaining patent protection, it is important to understand that the process does not end with an issued patent. Unless superficial protection is desired (e.g., a piece of paper to hang on the wall), patenting an invention is an ongoing process. Inventors should keep at least one application in the patent portfolio pending at all times. When the portfolio is pending, it can adapt as an offensive and defensive tool as the market for the technology evolves.  I call this ongoing process “proactive patent prosecution.”

Facts and Impressions that Juries Find Compelling in Patent Cases

It is rare to be able to see into the minds of the jurors after a large patent trial damage award.  However, in Joe Mullin, “Patent Litigation Weekly: So What do E.D. Texas Jurors Really Think?,” IP Law & Business (Jan. 9 2010), we are able to get a glimpse. Juries may have a desire to find in favor of a large company with a household name. However, a showing of: actual copying, a defendant patent infringer’s bad attitude, and a lack of interest from the defendant’s key stakeholders will help convince a jury that they should decide in favor of the patent owner.

What do Contingent Fee Lawyers Look for When Considering Specification Based Defenses?

The best contingent fee case will have many issued Patent claims, but among them, there should be a narrowly crafted claim with clear language that corresponds directly with the alleged infringement.  The best "contingent fee" claims will also be unquestionably supported and enabled by the specification and be free of "means plus function" language.

What Should Inventors Document from Conception Regarding Secondary Considerations of Non-Obviousness?

Inventors and patent owners should do everything they can to establish objective evidence of non-obviousness throughout and contemporaneously with the inventive process and the development of the market. What is this evidence, exactly?  It is evidence of "unpredictable results," "industry praise," "copying by others," "long-felt need," and "commercial success" that is directly tied to the claimed aspects of the invention.  Some examples from "famous" cases follow will help illustrate the type of information that should be compiled.

What do Contingent Fee Lawyers Consider when Evaluating Novelty and Non-Obviousness?

Patent lawyers must consider the question of novelty and obviousness when considering a case on a contingent fee basis. Lack of novelty due to anticipation is rarely a dispositive factor during a contingent fee licensing program.  Typically the more significant issue becomes combinations of art with "expert" arguments that "it would have been obvious" to come up with the invention.  However, with knowledge of the law, inventors can take action to establish a factual record of objective evidence of non-obviousness throughout the inventive process to combat future “obviousness” rejections. 

Making Sense of the Mess Caused by Alice, and Evaluating a Contingent Fee Patent Matter for Subject Matter Eligibility

It used to be that the law surrounding subject matter eligibility was clear-cut and well established.  The Supreme Court's “Alice” decision has cast a shadow over the application of 35 USC 101. We discuss one way to make sense of the current case law. For now, patent owners should analyze the current law to outline, identify, and amplify the aspects of their invention that are not “abstract” or indicate an “inventive concept” such as new technological improvements and/or unconventional features that go against what has been done before.

How Do You Cite to a YouTube Video as Non-Patent Literature in an Information Disclosure Statement?

YouTube is a fantastic source of information.  There is seemingly a video on any topic you can imagine.  If a picture is worth a thousand words, then a video can be worth millions of words.  So how do you take a video and turn it into something that can be submitted as an NPL document as part of an information disclosure statement?  It needs to be converted into a PDF document as I will show below.

Checking Completeness of Art Citations with a Cited Art Matrix

In any patent case, it is important to make sure that all of the known art has been cited during prosecution across all of the patents in the portfolio.  One tool that patent owners and lawyers can use to ensure that literature has been consistently and thoroughly cited across a patent family is an "art matrix." This post shows how to create an “art matrix” in Excel.

Validity and the Duty of Candor

Violation of the duty of candor can result in the invalidation of an entire patent portfolio.  Thus, it is essential to make sure that inventors and patent owners cite all known relevant art.  As a patent owner or inventor, it is a good idea to catalog all references found during your inventive process and err on the side of caution when including art on an information disclosure statement.