10 Mistakes That Will Kill Your Patent in Litigation & How To Avoid Them


Brandon Baum, of Baum Legal and Practice Center Contributor, will be speaking about litigation issues relevant to patent prosecution at PLI’s Fundamentals of Patent Prosecution 2011: A Boot Camp for Claim Drafting & Amendment Writing on July 8th in San Francisco.  Brandon shared with us an article he wrote for the Course Handbook entitled 10 Mistakes That Will Kill Your Patent in Litigation And How To Avoid Them. The following is an excerpt from the article:  

It is often said that hiring a litigator to draft a contract results in an iron‐clad contract that no one will ever sign. That’s because litigators learn by seeing how things can go wrong, and shoring things up to prevent that scenario from recurring in the future. We typically get involved when reasonable minds have failed to agree – the joint venture has gone south, the software didn’t perform, or the parties disagree over the scope or value of patented technology. Thus, we have developed a treasure trove of anecdotal evidence of what not to do and we live by the motto “learn from the mistakes of others, as you may not live long enough to make them all yourself.”1

As a patent litigator, I have had the frequent opportunity to learn from the mistakes of others in the context of patents. (Of course, those who have worked with and/or opposite me have had the benefit of learning from my mistakes, but I will leave it to them to catalogue them all.) Much like the aforementioned litigator‐turned‐contract‐drafter, I imagine I could write an iron‐clad patent application that would probably never pass muster at the USPTO. Fortunately, I am not qualified to prosecute patents since my “science” background is limited to an undergraduate degree in “political science,” and I have thus far been unsuccessful in persuading the USPTO of the proposition that “science is science.”

Undaunted, I shall attempt to convey to you some of the lessons I have learned as a patent litigator so that you who are qualified to prosecute patents might learn from them. These are not in any particular order, nor are they all of equal import or frequency. In my effort to come up with a full ten, I might have included some clunkers or stretched a little bit to fit some in. Nevertheless, here are ten mistakes that you can make in prosecution that will kill your patent in litigation.

Mistake No. 1: Characterization of “The Invention”

The MPEP and 37 CFR 1.73 require that the specification set forth:

A brief summary of the invention indicating its nature and substance, which may include a statement of the object of the invention, should precede the detailed description. Such summary should, when set forth, be commensurate with the invention as claimed and any object recited should be that of the invention as claimed.

This requirement should be preceded by Miranda warnings; i.e., anything you say can and will be used against you.2 Many patentees have gotten themselves into trouble when complying with this requirement because the characterization of “the invention” is overly narrow.

Take, for example, the case of Netcraft Corp. v. eBay, Inc., 549 F.3d 1394 (Fed. Cir. 2008).  Netcraft asserted two related patents against eBay and PayPal that purported to cover internet billing methods. Each asserted claim included the limitation “providing a communications link through equipment of the third party.” Netcraft argued that this limitation simply meant providing a connection between buyer and seller to enable atransaction, something that eBay and PayPal undoubtedly offered. Since the phrase “communications link” did not appear anywhere in the patent specification, Netcraft argued that the “plain meaning” of communications link should apply.

However, in the “Summary of the Invention,” the patents described the “objects of the present invention” as being achieved by “creat[ing] access to the Internet for the customer through the provider’s equipment.” Thus the district court and the federal circuit found that the claims require that the payment provider be the internet access provider (e.g., Comcast, AT&T). Netcraft, 549 F.3d at 1399 (“[W]e agree with the district court that the common specification’s repeated use of the phrase “the present invention” describes the invention as a whole….”)3Since eBay and PayPal are not internet access providers, there was no infringement.

How might Netcraft have avoided this problem? In the summary of the invention, it should not have characterized “the present invention” generally, and instead should have described “some embodiments of the claimed invention” or even more simply “some embodiments.” In that way, the claims will not be unfairly restricted in subsequent litigation by the argument that this introductory portion of the specification circumscribes the scope of otherwise broad claims.

Click here to read the full publication 10 Mistakes That Will Kill Your Patent in Litigation.





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