Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

IP Strategies forthe Robotics Industry

May 12, 2014

Presented byEric P. Raciti

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Robotics

• Multi-disciplinary: mechanical hardware, electronics and software

• Sensors, monitors, GPS tracking devices

• Processing data/signals occurs on device or server?

• Data stored on device, server, or cloud?

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• U.S. Supreme Court Confusion – Alice Corp. v. CLS Bank, Int’l

• § 101: Patentable Subject Matter

– Limelight Networks, Inc. v. Akamai Techs., Inc.• § 271: Induced Infringement

• Strategic Specification and Claim Drafting For Robotics

• Design Patents?

Overview

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What is Patentable Subject Matter?

• 1980: “[A]nything under the sun that is made by man”- Diamond v. Chakrabarty, U.S. Supreme Court- Patentable subject matter is very broad

EXCEPT…

- Abstract ideas (e.g., mathematical algorithms)- Natural phenomena (e.g., a subject’s reaction to a drug)- Laws of nature (e.g., Newton’s law of gravity)

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• The Mayo framework:

The “Mayo” Two Part Test

Mayo Step 1: Is claim directed towards …

• Abstract Idea?• Law of Nature?• Natural Phenomena?

Mayo Step 2: If so, does claim contain an “inventive concept”• i.e., does the claim in practice amount to “significantly

more” than a patent upon the ineligible concept?

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Takeaways: Mayo Step 2

• What qualifies as “significantly more?”– Improvements to another technology or technological field (Diehr)– Improvements to the functioning of the computer itself (Diehr)– Meaningful limitations beyond generally linking the use of an

abstract idea to a particular technological environment (Bilski)

• What does not add “significantly more”– Merely “automating” on conventional computer (Benson, Flook,

Mayo)– Limiting to a “particular technological environment” (Bilski)– Requiring nothing more than a generic computer performing well-

understood, routine and conventional activities (Alice Corp.)– A “data processing system” with a “communications controller” and

“data storage unit,” is “purely functional and generic.”

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§ 271: Infringement

(a) [DIRECT INFRINGEMENT] Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.

(b) Whoever actively induces infringement of a patent shall be liable as an infringer.

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§ 271(b): Induced Infringement

• Limelight v. Akamai (2014) – No one entity performs all

claimed steps– Limelight carries out several of

the claimed steps– Instead of tagging components of

its customers’ Web sites that it intends to store on its servers, Limelight requires its customers to do their own tagging

– Akamai argued that Limelight exercised “control or direction” over all steps because it provided instructions to customers

Content Delivery Network

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§ 271(b): Induced Infringement

• Limelight v. Akamai (2014) – Liability for inducement must be predicated on direct

infringement§ 271(b) Induced Infringement

– “[C]ase law leaves no doubt that inducement liability may arise ‘if, but only if, [there is] . . . direct infringement.’” Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U. S 336, 341 (1961) (emphasis deleted).

• Because there is no direct infringement there can be no inducement!

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Strategies for Protecting Robotics

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Strategic Claim Drafting

Draft Claims With an Eye Toward Enforcement– What types of infringing activities?– Who are the potential infringers?– Where would the potential

infringers and infringing activities be located?

– Where is the greatest value?– Identify claim types and claim

scope based on a strategic analysis of the potential infringers, infringing activities, and greatest value

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Strategic Claim Drafting

• Many computer-implemented inventions are implemented within networked environments including interconnected client device and back-end servers or remote control

• For computer-implemented inventions, consider claims drafted from different viewpoints

– Server-side claims (implemented by software, but can you discover infringement easily?)

– Client-side claims (mobile/local devices)

– Claims to processes implemented by servers or client devices

– Computer-readable medium claims (e.g., at servers or client devices; app downloads)

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Strategic Claim Drafting

• Use the possible safe harbors in Alice Corp. Focus on how inventions:– “[I]mprove the functioning of the computer itself” – are an “[I]mprovement in any other technology or

technical field”

• Claim more components than just general purpose computer (“processor”)

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Strategic Drafting: More is “More”

• Describe structural components in specification– Use a robust block diagram customized

for the invention– Multiple embodiments and drawings– Show invention is not simply “applying

it” to a computer; not generic

• Describe and claim a technical solution, not just a business method/process (e.g., moving stuff)

• Describe how invention contributes “significantly more” to technical field

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Strategic Drafting: Avoid Divided Infringement

• Claims: – Focus claim elements on single actor or entity– Draft multiple claim sets, each with a different focus in

terms of infringing activity by a single actor; also include different claim types

– Recite interaction or relationship with other components or actors, if needed for patentability

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• Identify and pursue opportunities for complementary design protection – e.g., design patent

applications directed to shape of wearable or overall design of robot

– e.g., design patent applications directed to computer-generated icons or changeable GUIs

Strategic Patenting

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Layer Your Product with IP Protection• Design patents protect “the way something looks”• Utility patents protect “the way something works”• One product can protected by layers of design and utility patents,

as well as other types of protection (trademark, trade secret, etc.)

Utility patents – electronics,methods of operation,

mechanisms

Design patents – shape, user interface

Design Patents

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Design Patents

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• 3D printers generate objects from CAD scans obtained through legitimate channels (e.g., manufacturers and designers) or illegitimate channels (e.g., peer-to-peer sharing sites)

• Prepare computer-readable media claims directed to instructions that cause 3D printers to generate objects– e.g., “A computer-readable medium storing instructions that, when

executed by at least one processor of a printing device, cause the printing device to generate an object, comprising . . .”

• May capture infringing peer-to-peer file sharing sites and other illegitimate distribution channels, if operated in U.S.

3D Printing – Utility Patents

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Speaker Information

Eric Raciti focuses his practice on intellectual property counseling, post grant proceedings and litigation, particularly in the fields of mechanical engineering, robotics and alternative energy.

Eric P. RacitiFinnegan, Henderson,

Farabow, Garrett & Dunner, LLPTwo Seaport Lane

Boston, MA 02210-2001Tel +1 617 646 1675 Fax +1 617 646 1666

eric.raciti@finnegan.com