Many patent cases are won and lost on claim drafting issues. In the recent Netcraft case, for instance, the claimed included the step of “providing a communications link through equipment of the third party.” In his three “Prescriptions for Drafting Assertable Claims, Ron Slusky shows how to avoid the drafting mistakes found in that claim. Ron Slusky is the author of Invention Analysis and Claiming: A Patent Lawyer’s Guide (ABA). Slusky’s seminars will be in seven venues this year: Chicago, Boston, Santa Clara, Philadelphia, DC, Dallas and NYC.
1. Claim the Invention in All of Its Commercially Significant Settings
An invention should be claimed in all of its commercially significant “settings” in order to prevent others from taking advantage of the inventor’s teachings while avoiding the patent.
A setting is a context in which the inventive concept is manifest—also sometimes called a “perspective” or “point of view”. For example, a cylinder lock invention may manifest itself in how the lock is constructed; in a unique type of key required to operate the lock; in the key-cutting machine that produces the unique type of key; or possibly even in the key blank. Each of these—the lock, the key, the key cutting machine and the key blank—is a separate setting in which the invention should be claimed because any given party may implement the inventive concept in only one particular setting. For example, manufacturers of key-cutting machines or key blanks will not infringe if only the lock itself was claimed. Other multiple-setting examples:
• a) Encoding a video signal (to reduce the amount of data required to represent it); b) decoding the encoded signal.
• a) Peptide; b) cell capable of producing the peptide; c) manufacturing the peptide.
A setting is not the same as a statutory class. For example, the lock invention could be defined within the key-cutting-machine setting by apparatus claims defining the structure of the machine as well as by method claims defining how the machine operates to cut the key.
2. Maintain the Integrity of the Invention Setting Boundary
Having decided to claim the invention in a particular setting, we should take care to restrict the claim to that setting. If something outside the boundary of the setting makes its way into the claim, parties whose activities would otherwise infringe the claim may no longer do so.
The following claim, for example, is intended to define a video compression invention in its encoding—e.g., integrated circuit encoder—setting.
A method comprising
generating a video signal to be encoded, and
encoding the video signal by performing the steps of …
Here the step of “generating a video signal to be encoded” is outside of the intended setting because the integrated circuit typically does not generate the video signal but, rather, receives it from somewhere else, e.g., separate scanning hardware. This is a point that integrated circuit manufacturers will lose no time in pointing out when the patent owner approaches them to take a license.
The solution is to assume that the input signal already exists at the point in time that the claimed method is carried out, thereby putting the actual generating of the input signal outside the boundaries of the claimed subject matter, and thereby restricting the claimed subject matter to the selected setting:
A method for encoding a video signal, the method comprising the steps of…
3. Draft claims that will be directly infringed by individual (as opposed to co-acting) parties
Contributory infringement, inducement and multiple-party direct infringement are all expensive and difficult to prove—and may not be able to be proved at all, even if the inventor’s teachings are being appropriated. Claims therefore should always be drafted to capture the activities of a) individual—as opposed to co-acting—parties who are b) direct infringers, if there is any way to do it (which there almost always is). That goal is largely achieved when the claims define the invention strictly within the boundaries of its various settings. However, we help ensure that our claims capture the activities of individual direct infringers by drafting and reviewing claims with such parties specifically in mind.
For example, infringement of the following internet-based claim invokes the actions of not only the desirable assertion target—the web server operator—but the individual internet user:
A method comprising
(a) selecting an icon displayed on a screen [user],
(b) transmitting to a web server a signal indicative of the selected icon [user],
(c) receiving the signal at the web server [web server], and
(d) processing the received signal in such a way that …. [web server]
An internet user and a web server operator are unlikely to be adjudged joint direct infringers; neither controls or directs the actions of the other. (See, e.g., BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373, 84 U.S.P.Q.2d 1545 (Fed. Cir. 2007)). And without direct infringement there can be no contributory infringement or inducement. So everyone escapes liability under such a claim.
The solution is to draft a claim strictly limited to the web server setting and, in so doing, draft a claim that reads exclusively on the activities of the web server operator.
A method comprising
(a) receiving a signal indicative of a user-selected screen-displayed icon, and
(b) processing the received signal in such a way that ….
Copyright © 2007, 2009 American Bar Association. All rights reserved. Adapted with permission.