Patenting Wireless Technology: Infringement and Invalidity

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Patenting Wireless Technology Infringement and
Invalidity
Dr. Tal Lavian http//cs.berkeley.edu/tlavian tl
avian_at_cs.berkeley.edu UC Berkeley Engineering,
CET
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Last Week Types of Patents
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
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Patent Infringement Basics
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• 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 products features)

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Patent InfringementDoctrine of Equivalents
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• 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 InfringementDoctrine of Equivalents
(cont.)
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• 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 patents claims, if it does so in a
  substantially different way to achieve a
  substantially different result, then it doesnt
  infringe
• Example you invent a method of curing cancer
  using Edisons light bulb ? would not infringe
• This defense is very rare

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Patent Infringement
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• Most of the time
• Scenario
• Company A thinks Companys Bs product infringes,
  sues B
• Bs legal counsel perform due diligence counsel
  says, Youll probably lose.
• B agrees to settle with A and either
• Stops producing the infringing product
• License As 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 InfringementOptions
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• A sues B. B decides to take the case to trial.
  What are Bs options?

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Patent InfringementDefense Patent Invalidity
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• Argue for patent invalidity
• Perform prior art search to find prior art that
  invalidates the patent claims
• Can show that A shouldnt 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 As behalf by
  providing evidence for clear intent to deceive
  the Patent Office
• Show that As patent has expired

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Patent InfringementDefense Non-infringing Use
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• Methods of demonstrating non-infringing use
• Perform an infringement analysis comparing As
  patent claims to Bs product features
• If not every element of one of As patents
  claims found in Bs product, then B is not
  infringing
• Prove that B already had a license for As patent
• Perhaps B already licensing As technology from
  C, in which case theres no infringement

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Patent InfringementUncommon Defenses
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• 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
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• 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
  patents claim read on the Galaxy Tabs unlock
  system

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Slide-to-Unlock Patent Claim Chart
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• Element-by-element breakdown of a patents claims
  compared to an allegedly infringing product
• Often used by prosecution for infringement
  analysis
• Very 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

• 1.
• (1.0) A method of unlocking a hand-held
  electronic device,
• the device including a touch-sensitive display,
  the method comprising
• (1.1) detecting a contact with the
  touch-sensitive display
• at a first predefined location
• corresponding to an unlock image
• (1.2) continuously moving the unlock image
• on the touch-sensitive display
• (1.2.1) in accordance with movement of the
  contact
• (1.2.2) while continuous contact with the touch
  screen is maintained,
• (1.2.3) wherein the unlock image is a
  graphical, interactive user-interface object
• (1.2.3.1) with which a user interacts in order
  to unlock the device and
•  (1.3) 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.
•  

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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.)
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Slide-to-Unlock Hypothetical (cont.)
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• The claim chart must clearly indicate that the
  Galaxy Tab infringes Apples patent
• What can Samsung do to defend itself?

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Slide-to-Unlock PatentPrior Art
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• 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
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Patent Infringement Hypothetical Samsung Defense
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• Samsung could
• Try to invalidate the patent with prior art, such
  as the Neonode N1ms unlocking system
• Argue that the patents claims are too broad
• Look for evidence of inequitable conduct on
  Apples behalf while filing for the
  slide-to-unlock patent
• Argue that the Galaxy Tab doesnt 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 DoE
• Defense of patent infringement
• Invalidity prior art, claims, inequitable
  conduct
• Non-infringment infringement analysis,
  licensing, prior use, Laches