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The Art of the Claim Chart

The Art of the Claim Chart

 

Protecting your company’s intellectual property is a vital business practice. IP protection ensures that the unique elements of your products and processes are protected and solidifies your standing in the industry. When it comes to patentable technology, patent claims are your first line of defense as they put the world on notice to the subject area and boundaries of your invention. When a competitor crosses those lines, crying “foul” isn’t going to stop him from making or using your patented invention—you have to prove it!

In the patent world, claims charts are used to illustrate how a real-world product or service is allegedly infringing your patent claim . Infringement must be proven by showing that the product or service (the “use”) infringes each and every element of the asserted claims. It is a detailed process that results in a simplified, aesthetically pleasing, textual and graphical comparison of the claims and the potentially infringing use. Because claim charts navigate the features of the product or service using claim terms, the explained potential infringement is often referred to as a “mapping.”

The depth of a claim chart can be dependent upon how it will be used. For instance, general claim charts, or other charts demonstrating “Evidence of Use,” may provide an overview of a patent’s claims and how a family of products or materials may be covered by those claims. Highly sophisticated claims charts will have more details from a thorough investigation of the products and services, and often point to support from the patent’s written specification to bolster an interpretation of a claim term. Generalized claim charts are typically used as internal tools to communicate about existing products and IP, and are typically used as stepping stones for licensing strategies. The more highly sophisticated claim charts are a necessary step for demonstrating actual infringement of each claim element and examining possible interpretations of the claim in preparation for patent litigation.

Claim Charts in Court

Highly sophisticated claim charts are a necessity when preparing to go to court. The claim charts will be the basis for the majority of petitions, briefs, and reports presented to the court. They are a vital tool in quickly and simply demonstrating the claims of the patent in relation to the product, service or other use in question. During trials, certain technologies and uses may require a more delicate approach as presenting the most-detailed claim charts may be overwhelming to anyone without an advanced degree. Claim charts must be tailored to the situation.

Whether asserting your patent rights against an alleged infringer or defending a product against a company’s patent infringement claim, well-planned, highly-developed claim charts set the tone of the trial and convey a depth of understanding and support that cannot be accomplished with other tools.

Knowledge is Power

In addition to the complex technology in the subject matter of some patents, patent laws can be complicated—and so can patent claims. It is unwise to expect that each person in the courtroom has the ability to evaluate claim language at a level that is necessary to quickly compare the claim to the product and make a determination of infringement. Claim charts lay out the claim elements, as well as the corresponding, allegedly infringing features of the use, in a way that the infringement (or non-infringement) is plain to the viewer. Claim charts are the accepted way of communicating complex process and analysis findings without burying the courtroom in high-tech jargon or legalese.

Perhaps the most powerful use of claim charts during trial is when they are explained by your expert witness. A well-qualified expert who can compare and explain each element of the claim and how the product- or service-in-question infringes is often the focal point of a patent infringement trial. Through declarations, expert reports, rebuttal reports, depositions, testimony and other presentations, the expert witness has the opportunity to walk a judge and jury through the alleged infringement with ease via the claim charts.

Burden of Proof

The hard truth is that it can be extremely difficult for the accusing company to win a case of patent infringement. Public policy is generally in favor of allowing businesses to grow and promoting a free marketplace where individuals are permitted to develop products and services without the fear of a meritless patent infringement claim.

To that end, the burden of proof lies with the accuser. If your patent is being infringed, it is advantageous to develop a detailed and comprehensive claim chart that clearly demonstrates the relationship between the patent claims and the suspect product or service. The clear and logical presentation of this information may mean the difference between winning and losing.

Many patent professionals, experts, and attorneys assert their proficiency at developing the most sophisticated claim charts. As claim charts are typically the basis of any patent infringement case, the key is to find an experienced team with industry knowledge and expert insight to help develop a rock solid case for you and your company’s needs.

Ready to learn more about claim charts and how to develop a winning patent infringement case? Contact the patent portfolio experts at TechPats today.








 


Portfolio Analysis: 5 Investor Tips To Enrich Your IP Portfolio

How do you know when it is time to conduct a portfolio analysis for intellectual property protection?

 

Intellectual Property Consulting and ProtectionThe biggest factor indicating a need for analysis, when looking at your intellectual property portfolio, is if you recognize a giant gap between your expectations and reality. If you are consistently staring at your patent monetization expectations from across the void, it is definitely time to reevaluate your patent portfolio.

An IP portfolio analysis allows you to understand why your intellectual property is under performing. When you know what is going on and, more importantly, why it is happening, it is a great starting point for aligning your patent portfolio with your business goals.

The following five investor success tips are helpful for refining your intellectual property so your patent monetization efforts are fruitful.

1. Invest In Smart Patenting Processes

One way to ensure your patent portfolio is primed for patent monetization is to intimately understand and predict where innovations in your industry may be headed in the next five to 10 years. That is no small order, which is why it is smart to invest in a strategic patenting program.

Partnering with an ip consulting firm that is well versed in IP portfolio management protection assists you in strategically patenting technologies that hopefully develop and grow in value over time, so you are never wasting resources again.

2. File For Patents Quickly And Efficiently

The America Invents Act enacted in 2013 changed the U.S. patent system to a first-inventor-to-file system. What this means is that disclosing your invention to the patent office before a competitor is paramount for protecting a strong patent portfolio. Getting to the patent office first protects your investment in your portfolio.

As an investment strategy, in order to file for patents before your competitors, you need to stay on top of technologies and have insight into where your industry is likely going next. It is highly recommended that you partner with a proven intellectual property consulting firm that acts as your eyes and ears in the field at all times to ensure intellectual property protection.

3. For A Patent Acquisition, Consider Its Value Over Time

When it comes to enriching your patent portfolio, keep in mind that patents have a shelf life. It would be shortsighted to ask for future royalties for a license to use an expired asset.

To get the most from your investment, you almost always want to purchase intellectual property with an optimal shelf life. An industry-relevant patent with 15 years before its expiration date is normally more valuable than a similar patent with only three years left on it. However, keep in mind that the older patents have earlier filing dates and could likely be better suited to survive validity challenges.

4. Put In The Appropriate Amount Of Due Diligence

To be effective and meet your investment goals, IP portfolio management is a labor-intensive project. You need to know the market, the technology and the patent’s potential. You also need to have a good intellectual property protection firm on your side.

You must know when there is a possibility of patent infringement and when that can eventually lead to patent licensing or an infringement suit. Also, since not all of your patents are going to be cash cows, you may need to consider if pruning your portfolio makes the most sense long-term.

Partnering with an intellectual property consulting firm helps you identify potential infringers to pursue licensing and/or lawsuit strategies, or possibly even parties who could be interested in monetizing your under performing patents.

5. Do Something With It!

It is not likely that a competitor is going to approach you, hand you cash, and ask politely for a license to your patent. Owning a patent gives you the right to exclude others from making or using the claimed invention. Without at least considering exerting your rights, your patent is not worth much to anyone.

You get out of your patent portfolio what you put into it. When your patent application is granted or you acquire a new patent, it is important to have a strategy in place. Your plan may involve anything from making a product to enforcing your intellectual property through patent litigation.

Patents are not meant to be collectibles you put on a shelf to admire. Many people want to license their patents then sit back and collect royalties, but a licensing strategy is only feasible if you are willing to invest the necessary time and effort. The important thing is to keep your patent portfolio active.

If you are looking to better align your patent portfolio with your business investment goals, it’s time to conduct a portfolio analysis with the help of an intellectual property consulting firm. As you begin to understand your portfolio’s strengths and weaknesses, you are then able to set a strategic plan to get your intellectual property working in your favor.

Ready to learn more about portfolio analysis and how to apply investor tips to turn around your under performing intellectual property? Contact the patent portfolio experts at TechPats today.


3 Intellectual Property Lawsuits Every Business Owner Should Understand

3 Intellectual Property Lawsuits Every Business Owner Should Understand

 

Intellectual property lawsuits are a reality of maintaining a productive IP portfolio. As one facet of your patent monetization efforts, you should be prepared to actively protect your patents – via legal proceedings, if necessary – to ensure other companies don’t use your patented invention to earn revenue.

Patent litigation requires an understanding of some of the landmark standards that have been seen in major, recent intellectual property lawsuits. The following three lawsuits have changed the game for patent infringement, licensing and injunctions.

1. Microsoft v. i4i: Supreme Court Rules Against Microsoft

If you are a smaller company experiencing patent infringement from enterprise organizations, you do not have to accept being pushed around the playing field.

Back in 2011, there was a high-profile intellectual property lawsuit in which the Supreme Court unanimously upheld a lower court ruling that software behemoth Microsoft infringed the patents of a small Canadian company, i4i. The ruling hinged on the strength of the presumption of “validity” for claims of a patent allowed by the USPTO.

Although Microsoft attempted to paint i4i as a “patent troll,” the small company withstood the legal fees and came out on top. An alleged infringer needs to show “clear and convincing” evidence in order to invalidate the claim in question at trial. Microsoft was forced to pay out $290 million for patent infringement.

If Microsoft had won the intellectual property lawsuit, however, it would have established a new precedent making it easier to invalidate a patent.

2. Ebay v. MercExchange: No Guarantee Of Injunction

Once you’ve proven before the court that someone has infringed upon your intellectual property, that doesn’t necessarily mean you are granted an injunction so they permanently cease infringing.

Back in 2000, eBay began negotiations to outright purchase MercExchange’s online auction IP portfolio – eBay had already been using practices from their patents at the time. Sometime in the middle of negotiations, eBay abandoned the purchasing effort and MercExchange sued eBay for patent infringement … and won.

After the verdict, MercExchange sought an injunction to prevent eBay’s continued use of its intellectual property. This time, the District Court denied their request. However, the Federal Circuit reversed the District Court, stating there was a “general rule that courts will issue permanent injunctions against patent infringement absent of exceptional circumstances.”

That being said, the Supreme Court ultimately overturned the Federal Circuit’s approval of the injunction, determining that an injunction should not be automatically issued based on a finding of patent infringement. Then, it also ruled that District Court originally erred in denying an injunction based on the fact that MercExchange does not practice their patented invention.

3. Microsoft v. Motorola: Jury Puts End to Patent Shenanigans

Not all intellectual property lawsuits are about patent infringement.

Back in 2011, Google bought Motorola Mobility for $12 billion. Many say the motivation of this purchase was Motorola’s IP portfolio – Google wanted to use it to fight back against certain Microsoft lawsuits. However, the Western District Court of Washington instructed Motorola to pay Microsoft $14.5 million for abusing those patent royalties by refusing to license standards-essential, “FRAND” patents at reasonable terms.

The verdict in this intellectual property lawsuit was a landmark decision and contributed to a growing list of regulators and courts sending the message that the best patent policies encourages use of patented, standards-essential subject matter paired with reasonable and non-discriminatory licensing practices.

Patent litigation simply comes with the territory of effectively managing your IP portfolio. However, there’s nothing simple about intellectual property lawsuits.

Whether you have in-house or outside counsel to guide your legal proceedings, it’s incredibly helpful to partner with a patent litigation support team that allows your legal team to focus on patent law by offering comprehensive support in the technical and legal aspects of a patent infringement lawsuit. Pre-trial planning, reverse engineering, invalidity analysis and excellent technical experts make all the difference in a verdict.

Ready to learn more about intellectual property lawsuits and find the right patent litigation support? Contact TechPats today.


Patent Mining: 3 Tips To Successfully Navigate The Crowded IP Marketplace

Patent Mining: 3 Tips To Successfully Navigate The Crowded IP Marketplace

 

navigate crowded marketplaceDo you want to make marked improvements to your company’s bottom line while also maximizing shareholder value? Patent mining, coupled with methods for extracting value from your IP portfolio, is capable of producing very positive results.

Fifteen years ago, corporate income from patent licensing in the U.S. was at $15 billion. Today, the sum of U.S.corporate income that results from patent licensing exceeds $100 billion.

An effective patent mining program involves searching for valuable opportunities for your intellectual property, such as:

  • New applications of technology
  • New markets for the technology
  • Extensions of the technology
  • Patent infringement candidates
  • Hot technology or divisions for joint ventures

Portfolio assessment and patent mining is a proven process for uncovering the hidden gems within your IP portfolio. However, you need to avoid the pitfalls when attempting to successfully navigate the crowded patent mining marketplace.

The following three tips help to ensure you take the most solid path for patent mining that results in profitability:

1. Know The Processes Of Patent Mining

Patent mining may be done manually or automatically – both process have their shortcomings.

Automated tools are not a guaranteed strategy for patent mining, as there is no way to ensure that no stone is left unturned. These tools often miss applications of a technology across other industries. Manual patent mining is a very deliberate, thoughtful process, but it takes a long time, and is therefore also an expensive process.

The most beneficial patent mining process for uncovering your intellectual property gems is to partner with a firm that has a proven method of iteratively mining IP portfolios.

2. Understand That You Get What You Pay For

The CFO of your firm might find cost-containing appeal in cheap offshore patent mining services. However, offshoring your IP services comes with many issues:

Does the offshore organization follow processes to maintain confidentiality and have a sufficient amount of insurance coverage? Are they current with U.S. case law? This list of questions concerning the practices of offshore patent mining goes on and on…

The point is, with offshore patent mining, you receive no guarantee that those miners have anywhere close to decades of industry experience or comprehensive knowledge of a technological space.

3. Look For A Firm With Balanced Patent Mining Experience

It is important to ensure the firm you partner with for patent mining and portfolio assessment employs talented people with years of experience.

A great question to ask any intellectual property consulting firm is if their talent is in-house or through contractors. If the consulting firm employs an endless army of patent mining contractors, those contractors may work to a different set of standards from your own.

The potential to mine gold from your IP portfolio is great. But, you must partner with the right intellectual property consulting firm: one that approaches your portfolio assessment and patent mining with hard-won expertise.

A proven track record, along with a comprehensive approach to patent mining, ensures you are going to extract the most income for your company in the most efficient manner.

Ready to learn more about a capable intellectual property consulting firm that puts into practice the best methods for patent mining? Contact the patent mining experts at TechPats today.