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Prosecution Tips from a Patent Litigator’s Perspective Paul D. Tripodi II Sidley Austin LLP Mr. Tripodi is a partner in the Los Angeles office of Sidley Austin LLP in the Firm’s West Coast Intellectual Property and Technology Practice Group. This article presents only the author’s then present views, which should not be attributed to the Firm or to any of its clients. Los Angeles, California. © 2004-2008 All Rights Reserved

The (Conflicting) Goals of Patent Prosecution • Initial Application – Broadest Possible Protection – Satisfy Written Description and Definiteness Requirements – Provide an Enabling Disclosure – All for $5,000, $10,000, maybe $15,000…?

• Prosecution – Avoid Inequitable Conduct – Avoid Malpractice – Avoid Estoppels and Maintain Flexibility of Claims – Get a patent

Goals of Litigation • Destroy Patent at all costs !! – $1 Million through claim construction… – $3-4 Million through dispositive motions… – $5-8 Million through trial

• Typical Patent Case – Two years – Assistance of Experts – Every statement analyzed • Patent • Prosecution History • Prior Art • Documents • Sworn testimony of inventor

The Varied Phases of Patent Prosecution •

The Invention Disclosure – “Introduction to the Problem, Interviewing Inventors, and Client Goals” •

Gregory D. Allen

– “Overview of the Requirements of Patentability” • Hathaway P. Russell

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The Application – “Overview of Application Drafting and Provisional Applications” • Scott W. Cummings

– “Specification Drafting” • Troy E. Grabow

– “Additional Application Parts, Filing, and Electronic Filing” • Robert E. West

– “Introduction to Claim Drafting” • Jonathan H. Spadt • Rick A. Toering • Lawrence M. Sung

The Varied Phases of Patent Prosecution •

Inventorship Considerations – “Inventorship” • H. Sanders Gwin

•

Satisfying the Duty of Candor – “Ethics, IDSs, and Duty of Candor” • Jeffrey N. Townes/Jeffrey A. Lindeman, Ph.D.

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Prosecution and Issuance – “Responding to Non-Art Examiner Actions & Affidavit Practice ” • Hal Brent Woodrow

– “Responding to Prior Art Examiner Actions” • Denise M. Kettleberger

– “Interviewing Examiners and Knowing the USPTO” • Leon Radomsky

– “Restriction/Election and Double Patenting” • Brian R. Stanton, Ph.D.

The Varied Phases of Patent Prosecution •

Post-Issuance Practice – “Petitions, Appeals, and Interferences” • William F. Smith

– “Continuation Practice and Request for Continued Examination” • George Wheeler

– “Issuance, Term, Certificates of Correction, Disclaimers and Maintenance” • Robert M. Hansen

Today’s Goals

• Insight into the litigation perspective • Provide some practical advice

The Disclosure: More Tips • THE GOLDEN RULE OF PATENT PROSECUTION: You do not need to represent EVERY client who walks through the door – Trust your instincts • • • •

Will not give straight answers Difficult to reach/Fails to return phone calls Resists paying initial retainer Doesn’t want you talk to the inventors

– Think of the problematic client as a potential malpractice plaintiff – And remember the dead inventor: Applied Materials Inc. v. MultiMetrixs

The Disclosure: More Tips • Get Retainer Agreements in writing – Specify narrow scope of engagement

• Be diligent and immediately determine potential bar dates or forthcoming disclosures – Don’t accept conclusory answers from the client – Ask questions that elicit a response • “What have you done to market the invention?” v. “You haven’t done anything to market the invention, have you?”

– Ask follow up questions – Consider politely confirming client’s representations in writing

The Patent Application • Be careful that you don’t become an inventor – Lead your client to the solution

• Get assignments as soon as possible – Unexpected firing or departure of inventor

CLAIM DRAFTING • What is your mission? – Draft claims that will LITERALLY cover any potentially infringing device • The best patents don’t need to rely on the doctrine of equivalents • Good Claims get licensed, not litigated

– Draft Claims to Avoid Amendment • Consider submitting narrower claims with initial application and broader claims later, once scope of prior art better established

CLAIM DRAFTING • Phillips – Death of the Dictionary – Effect on Prosecution • Claims v. Remainder of Specification

– Importing Limitations into the Claims – Use of multiple embodiments and claim differentiation

CLAIM DRAFTING • Draft claims of varying scope – Broad Claims – Picture claims – Variety of Terms/Limitations and variety of scope • Benefits infringement and Validity Inquiry • Avoid being pinned down – Claim differentiation

– More claims often better

• Consider whether precise definitions of claim terms are necessary

Claim Drafting • Narrower and varied claims will help avoid unknown prior art • Picture Claims least susceptible to attack – Catch the copyist

• Large number of claims often problematic for accused infringers – More difficult to invalidate – More expensive to study

• Litigators love claim differentiation !! – Can pick and choose asserted claims to avoid invalidity challenges – Easier to seek a broad interpretation of claims

Claim Drafting • Real Life Example

The $80 Million Dollar Claim Construction Question

The $80 Million Dollar Claim Construction Question

DX 18

The $80 Million Dollar Claim Construction Question

DX 18

The $80 Million Dollar Claim Construction Question

The $80 Million Dollar Claim Construction Question • Asserted Claims Required: – “a spacer having a partition wall in the form of a grid…”

? ?

The $80 Million Dollar Claim Construction Question • Asserted Claims Required: – “a spacer having a partition wall in the form of a grid…”

Ladder PX 212, Sawin O-38 #1

Ladder

Ladder

#3

#5

Ladder #2

Ladder #4 17

The $80 Million Dollar Claim Construction Question • Asserted Claims Required: – “a spacer having a partition wall in the form of a grid…”

Patent Owner

Defendant

“a” may mean “one or more than one”

“a” requires a single spacer with a single partition wall

Court’s Construction: RULING ISSUED DURING TRIAL !!

The $80 Million Dollar Claim Construction Question • Asserted Claims Required: – “a spacer having a partition wall in the form of a grid…” Patent Owner

Defendant

“a” may mean “one or more than one”

“a” requires a single spacer with a single partition wall

Court’s Construction: “one or more spacers having a partition wall…”

Claim Drafting • Skillful Claim Drafting to Avoid Infringement Issues – Section 102(g) Problems • Method steps performed outside of the USA • Include product claims wherever possible

– The Single Actor Problem • All actions must be under the control of a single actor – BMC v. Paymentech, 498 F.3d 1373 (Fed. Cir. 2007) – Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008)

• Must be a “sufficient connection” such as a contractual relationship – Advance ME v. RapidPay (Fed. Cir. 2007)

• Focus on one party at a time

Claim Drafting • The Emerging Battleground – ENABLEMENT !! – Must enable the full scope of the claim • Include some middle ground • e.g., Surfactant – claim would cover any surfactant in any concentration while application only had 3 working examples – Par Pharmaceuticals v. Roxane Labs. (Fed. Cir. 2007)

– Each “distinctly different” embodiment must be enabled • Enabling only one embodiment is insufficient • e.g., Mechanical and Electronic Sensor Structures – Automotive Technologies Int’l v. BMW (Fed. Cir. 2007)

Claim Drafting • SHOW ME THE MONEY !! – Include claims to the highest value product • Processor v. Computer incorporating Processor • Lens v. system incorporating the lens

Satisfying the Duty of Candor • Things to Remember – The patent will be more difficult to attack if you submit more art (but not too much art !) – Anything left in the inventor’s files will be the subject of an inequitable conduct claim – Try to communicate directly with the inventors, not management or in-house counsel – Remember to carefully monitor related applications not just art, but office actions.

Patent Prosecution: General Tips • Competing Concerns – Arguing the rejection – Obtaining an allowance – Avoiding Estoppels • Claim Construction • Doctrine of Equivalents

Patent Prosecution: General Tips • Argument and Amendment Estoppels – Statements made during prosecution that can be used to limit the scope of a claim term and/or application of the doctrine of equivalents – Amendments made during prosecution that surrender part of the original claim scope and/or foreclose application of the doctrine of equivalents

Patent Prosecution: Argument and Amendment Estoppel • PATENT PROSECUTION RIGHTS – You have the right to remain silent. – Anything you say can and will be used against you in a court of law. – You have the right to (act like) a lawyer. – If you give up these rights, you will be foreclosed from broadly asserting your patent

• WAIVER OF PATENT PROSECUTION RIGHTS – Do you understand the rights I have just read to you? – With these rights in mind, do you wish to speak to me?

Patent Prosecution: Argument and Amendment Estoppel • Responses to Office Actions – Avoid Unequivocal Characterizations • “The X Patent does not show . . .”

– Avoid “interpreting” claim terms – Avoid terms with legal significance • E.g. “The X Patent discloses . . .” • E.g. “The X Patent describes . . .”

– Avoid saying too much • Be brief, not wordy • Avoid alternative arguments – Everything but the kitchen sink… – CAFC says estoppel may still apply

Patent Prosecution: Argument and Amendment Estoppel • Responses to Office Actions (cont’d) – Try to discuss the Art, Not the Invention • If possible, argue the merits of the rejection – Shortcomings of disclosure – No suggestion to combine (KSR?)

• Avoid characterizing the “invention” – “The invention is directed to . . .”

– Indicate that the amendment is to “better define” the invention • Is this a fiction?

Patent Prosecution: Argument and Amendment Estoppel • Use INTERVIEWS strategically – fewer statements or characterizations on the record • scope or content of prior art • asserted meaning of claim terms

– hypotheticals can sometimes be explored • “what if . . .” • “how about. . .”

Patent Prosecution: Death By Declaration • Types of Declarations – Substantive • e.g. Commercial Success

– Section 131 • Swear Behind Prior Art • Evidence of conception and RTP

Patent Prosecution: Death By Declaration • Almost never bulletproof – Spend the time/money to do it right – Get input from a litigator in the office

• Fertile Ground for Litigators – Development details and dates – Differences between the invention disclosure and text of patent – Declarations create opportunity for inequitable conduct claims

Patent Prosecution: Death By Declaration • Appeal? – Time Consuming – Expensive – Detailed • Remember Less is More

Post-Issuance Practice Tips • Keep a continuation on file – Insurance against defects – Follow subsequent changes/developments

• Clean the file/computer? Instruct the client to do the same? – State of the law? – Consider whether you can discard drafts, notes (including any marked up prior art), draft responses, etc. – Potential to avoid the embarrassment, innuendo, and A/C waiver issues

Post-Issuance Practice Tips • Consider keeping evidence of invention and compliance with duty of disclosure – Invention Disclosure – Clean copies of search results – Proof of diligence in prosecution process • E.g. transmittal letters

• Do NOT agree to pay maintenance fees

THE END • Questions?