Patenting Wireless Technology: Infringement

and Invalidity

Dr. Tal Lavian

http://cs.berkeley.edu/~tlaviantlavian@cs.berkeley.edu

UC Berkeley Engineering, CET

Last Week: Types of Patents2

Type Is for Term #s

Utility

Function, use 20 years 6,214,874

Design

Appearance 14 years D202,331

Plant Asexually reproduced

20 years PP10123

Patent Infringement – Basics

What does it mean to infringe a patent? Manufacture, import, sell, or offer to sell

patented technology Courts’ test for infringement has two steps:

Analyze the claims to construe their meaning (a.k.a. “claim construction”)

Attempt to apply the claims to the accused infringing product (a.k.a. seeing if the claims “read on” the product’s features)

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Patent Infringement–Doctrine of Equivalents

Doctrine of Equivalents (DoE) – a product may still infringe a patent without directly infringing its claims if it performs substantially the same function in substantially the same way to yield substantially the same result

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Patent Infringement–Doctrine of Equivalents (cont.)

Purpose of DoE is to prevent potential infringers from making insignificant changes to a patented product in order to circumvent the claims

Reverse Doctrine of Equivalents Essentially, even if a product directly infringes on a

patent’s claims, if it does so in a substantially different way to achieve a substantially different result, then it doesn’t infringe Example: you invent a method of curing cancer using

Edison’s light bulb would not infringe This defense is very rare

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Patent Infringement

Most of the time: Scenario:

Company A thinks Company’s B’s product infringes, sues B B’s legal counsel perform due diligence; counsel says,

“You’ll probably lose.” B agrees to settle with A and either

Stops producing the infringing product License A’s patent in order to continue infringing

Sometimes: Scenario:

Same as above, but B decides to go to court to defend their product

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(Direct) Patent Infringement–Options

A sues B. B decides to take the case to trial. What are B’s options?

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Patent Infringement–Defense: Patent Invalidity

Argue for patent invalidity: Perform prior art search to find prior art that

invalidates the patent claims Can show that A shouldn’t have gotten patent in the first

place Use claim construction to determine the breadth

of the claims Argue that claims are too broad, invalid

Demonstrate inequitable conduct on A’s behalf by providing evidence for clear intent to deceive the Patent Office

Show that A’s patent has expired

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Patent Infringement–Defense: Non-infringing Use

Methods of demonstrating non-infringing use:

Perform an infringement analysis comparing A’s patent claims to B’s product features If not every element of one of A’s patent’s

claims found in B’s product, then B is not infringing

Prove that B already had a license for A’s patentPerhaps B already licensing A’s technology

from C, in which case there’s no infringement

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Patent Infringement–Uncommon Defenses

Prior user defense Applies only to business method patents If B can prove use of the patented process at least one

year before its application was filed, B is not infringing Must be an “innocent infringer” i.e., did not know of the

patent

Laches A is not allowed to assert patent rights if it can be

shown A delayed enforcement to increase potential damages from B

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Patent Infringement – Slide-to-Unlock Hypothetical

Assume Apple sued Samsung for infringing the slide-to-unlock patent with its Galaxy Tab.

First, the court would construe the claim language in a Markman hearing to determine the meaning of key terms

Second, the court would use a claim chart to analyze the degree to which the slide-to-unlock patent’s claim read on the Galaxy Tab’s unlock system

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Slide-to-Unlock Patent –Claim Chart

Element-by-element breakdown of a patent’s claims compared to an allegedly infringing product Often used by prosecution for infringement

analysisVery useful for visualizing which aspects of

the claims are read upon by potentially infringing devices

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US# 8046721— Slide to Unlock — Claim 1

Slide-to-unlock patent claim 1 Samsung Galaxy Tab

A method of unlocking a hand held electronic device device including a touch sensitive display the method comprising:

(Each of these rows would be filled with Galaxy Tab features that read upon the claim elements in the opposite column)e.g., The Galaxy Tab has a touch screen that detects contact and which displays unlock images.

detecting a contact with the touch sensitive display at a first predefined location corresponding to an unlock image;

The Galaxy Tab has a touch screen that detects contact. Detects contact at the beginning of the unlock image.

continuously moving the unlock image on the touch sensitive display in accordance with movement of the contact while continuous contact with the touch screen is maintained wherein the unlock image is a graphical interactive user interface object with which a user interacts in order to unlock the device; and

e.g., To unlock the Galaxy Tab, the user must slide her finger across the touch screen, maintaining continuous contact while interacting with the unlock image.

unlocking the hand held electronic device if the moving the unlock image on the touch sensitive display results in movement of the unlock image from the first predefined location to a predefined unlock region on the touch sensitive display.

e.g., Once the user completes sliding the unlock image from the starting point to the ending point on the touch screen, the Galaxy Tab is unlocked.

(To prove infringement, need to show each and every element of a claim.)

Slide-to-Unlock Hypothetical (cont.)

The claim chart must clearly indicate that the Galaxy Tab infringes Apple’s patent

What can Samsung do to defend itself?

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Slide-to-Unlock Patent–Prior Art

Prior art listed as other patents under “References Cited”

However, other undiscovered or undisclosed prior art is often revealed in court Example: if Apple sued for slide-to-unlock

infringement in the U.S., defendant might cite Neonode N1m (early smartphone released in 2005) as prior art in an attempt to invalidate patent

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Slide-to-Unlock Patent –Prior Art (cont.)

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Slide-to-unlock function four minutes in

Patent Infringement – Hypothetical Samsung Defense

Samsung could: Try to invalidate the patent with prior art, such as

the Neonode N1m’s unlocking system Argue that the patent’s claims are too broad Look for evidence of inequitable conduct on

Apple’s behalf while filing for the slide-to-unlock patent

Argue that the Galaxy Tab doesn’t include every element of the claims

What do you think would be the result of this case?

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Summary

Infringments: DoE vs Reverse DoEDefense of patent infringement:

Invalidity: prior art, claims, inequitable conduct Non-infringment: infringement analysis, licensing,

prior use, Laches