US Claim Drafting Christopher J. Palermo 23 May 2006

1
US Claim DraftingChristopher J. Palermo23 May
2006

• Hickman Palermo Truong Becker LLP
• Intellectual Property Law
• San Jose, California
• www.hptb-law.com

2
Overview

• Phillips v. AWH Corp., CAFC, July 12, 2005,
  www.fedcir.gov/opinions/03-1269.pdf
• The specification, prosecution history, and other
  intrinsic evidence, control claim
  interpretation
• Dictionary definitions, trade usage, expert
  opinions, and other extrinsic evidence are not
  considered except in the absence of resolution
  based on intrinsic evidence

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The Landscape Since Phillips

• Federal Circuit has issued about 15 opinions that
  address claim interpretation
• 90 have cited Phillips and relied upon it to
  resolve claim interpretation issues.
• The court very recently said that Phillips
  stressed the dominance of the specification

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Five Rules Based on Recent Cases
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Five Rules Based on Recent Cases

• Beware of limitations in the drawings.

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Ncube Corp. v. Seachange Intl

• Claims recited an upstream manager of a server
• Drawings showed arrows 124, 126 with arrowheads
  on one end
• Claim dispute whether data can go down from
  the upstream manager
• Held, upstream and the arrow do not limit data
  movement to one direction The specification
  describes only one embodiment, and also expresses
  divergence

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Five Rules Based on Recent Cases

• Beware of limitations in the drawings. Use no
  arrowheads, or arrowheads on both ends.
• Do not mix method steps into apparatus claims.

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IPLX Holdings v. Amazon.com

• The system of claim 2 including an input means
  wherein the predicted transaction information
  comprises X and Y, and the user uses the input
  means to either change the predicted transaction
  information or accept the displayed X and Y.
• A seller of the apparatus would not know from the
  claim whether it might also be liable for
  contributory infringement because a buyer later
  performs the method

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IPLX Holdings v. Amazon.com

• Recite structure instead
• The system of claim 2 including an input means
  wherein the predicted transaction information
  comprises X and Y, and wherein the input means
  comprises means for receiving user input
  indicating either a change to the predicted
  transaction information or user input indicating
  acceptance of the displayed X and Y.
• Full discussion CIPA Journal, January 2006

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Five Rules Based on Recent Cases

• Beware of limitations in the drawings. Use no
  arrowheads, or arrowheads on both ends.
• Do not mix method steps into apparatus claims.
  All mixed claims are now suspect.
• If separate parts of a process could be
  implemented in separate countries, use system or
  apparatus claims instead.

11
NTP, Inc. v. Research in Motion Ltd.

• Claims to an electronic mail system reciting
  equipment located in the US and a relay in Canada
  are infringed by US users
• infringing use of a claimed system occurs in the
  place at which the system as a whole is put into
  servicei.e., the end users location
• Claims to a process implemented with the same
  equipment and relay are not infringed
• All steps of the method must be performed in the
  US

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Five Rules Based on Recent Cases

• Beware of limitations in the drawings. Use no
  arrowheads, or arrowheads on both ends.
• Do not mix method steps into apparatus claims.
  All mixed claims are now suspect.
• If separate parts of a process could be
  implemented in separate countries, use system or
  apparatus claims instead.
• If specification discloses one embodiment, claim
  cannot be broader than that embodiment

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Lizardtech, Inc. v. Earth Resource Mapping, Inc.

• Specification describes one way for compressing
  digital images by using a seamless discrete
  wavelet transform (DWT).
• Claim 21 covers all DWTsdoes not recite
  seamless
• The trouble with allowing claim 21 to cover all
  ways of performing DWT-based compression
  processes that lead to a seamless DWT is that
  there is no support for such a broad claim in the
  specification.

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Lizardtech, Inc. v. Earth Resource Mapping, Inc.

• Public policy and the notice function of claims
• Inventor will not be given claim scope far
  greater than what a skilled artisan would
  understand the inventor to possess or greater
  than what is enabled
• While a claim can use a broad term to encompass 2
  or more embodiments given in the specification,
  when only 1 way is disclosed the use of broader
  terms may lead to invalidity

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Five Rules Based on Recent Cases

• Beware of limitations in the drawings. Use no
  arrowheads, or arrowheads on both ends.
• Do not mix method steps into apparatus claims.
  All mixed claims are now suspect.
• If separate parts of a process could be
  implemented in separate countries, use system or
  apparatus claims instead.
• If specification discloses one embodiment, claim
  cannot be broader than that embodiment
• A concretely expansive specification may expand
  the scope of an unintentionally narrow claim

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Lava Trading, Inc. v. Sonic Trading

• A data processing method for providing trading
  information to traders in a security or commodity
  from two or more alternative trading systems,
  comprising the steps of receiving order book
  information from each participating alternative
  trading system in order book information
  protocols native to the particular alternative
  trading system converting the information to a
  common system order book protocol integrating
  the order book information from each alternative
  trading system into a single order book
  distributing the combined order book to the
  traders in the common system order book protocol
  and displaying said combined order book to the
  traders

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Lava Trading, Inc. v. Sonic Trading

• Specification described displaying only a subset
  of the combined information
• The claim preamble recited a security or
  commodity, suggesting fewer than all
• Potentially problematic claim was saved by an
  expansive specification with several different
  examples

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Nystrom v. Trex Co. Inc.

• Claim A board for use in constructing a
  flooring surface for exterior use, said board
  having
• Specification exclusively described boards cut
  from wood logs and addressed problems of water
  penetration into wood. Drawings show grain
• Trex made plastic resin-based synthetic boards
  not cut from logs
• Potentially problematic claim was not saved by
  inventors failure in the specification to
  identify synthetic lumber as an alternative
• Last paragraph of specification was boilerplate
  broadening languageignored

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Five Rules Based on Recent Cases

• Beware of limitations in the drawings. Use no
  arrowheads, or arrowheads on both ends.
• Do not mix method steps into apparatus claims.
  All mixed claims are now suspect.
• If separate parts of a process could be
  implemented in separate countries, use system or
  apparatus claims instead.
• If specification discloses one embodiment, claim
  cannot be broader than that embodiment
• Sprinkle the specification with creative,
  possible alternatives beyond what the inventor
  presently contemplates

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Claim Examples
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Thank you

• Christopher J. Palermo
• Hickman Palermo Truong Becker LLP
• 2055 Gateway Place Suite 550
• San Jose, CA 95110
• 408.414.1202
• cpalermo_at_hptb-law.com