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

3. 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”

4. Five Rules Based on Recent Cases

5. Five Rules Based on Recent Cases • Beware of limitations in the drawings.

6. Ncube Corp. v. Seachange Int’l • 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 …”

7. 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.

8. 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

9. 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

10. 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 service”—i.e., the end user’s 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

12. 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

13. 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 DWTs—does 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.”

14. 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

15. 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

16. 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

17. 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

18. 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 inventor’s failure in the specification to identify synthetic lumber as an alternative • Last paragraph of specification was “boilerplate” broadening language—ignored

19. 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

20. Claim Examples

21. Thank you Christopher J. Palermo Hickman Palermo Truong & Becker LLP 2055 Gateway Place Suite 550 San Jose, CA 95110 408.414.1202 cpalermo@hptb-law.com