Patenting Wireless Technology: Infringement and Invalidity

1. Patenting Wireless Technology: Infringement and Invalidity Dr. Tal Lavian http://cs.berkeley.edu/~tlavian tlavian@cs.berkeley.edu UC Berkeley Engineering, CET

2. Last Week: Types of Patents

3. Patent Infringement – Basics 7 • What does it mean to infringe a patent? • Manufacture, import, sell, or offer to sell patented technology • Courts’ test for infringement has two steps: • Analyze the claims to construe their meaning (a.k.a. “claim construction”) • Attempt to apply the claims to the accused infringing product (a.k.a. seeing if the claims “read on” the product’s features)

4. Patent Infringement–Doctrine of Equivalents 8 • Doctrine of Equivalents (DoE) – a product may still infringe a patent without directly infringing its claims if it • performs substantially the same function • in substantially the same way • to yield substantially the same result

5. Patent Infringement–Doctrine of Equivalents (cont.) 9 • Purpose of DoE is to prevent potential infringers from making insignificant changes to a patented product in order to circumvent the claims • Reverse Doctrine of Equivalents • Essentially, even if a product directly infringes on a patent’s claims, if it does so in a substantially different way to achieve a substantially different result, then it doesn’t infringe • Example: you invent a method of curing cancer using Edison’s light bulb  would not infringe • This defense is very rare

6. Patent Infringement 2 • Most of the time: • Scenario: • Company A thinks Company’s B’s product infringes, sues B • B’s legal counsel perform due diligence; counsel says, “You’ll probably lose.” • B agrees to settle with A and either • Stops producing the infringing product • License A’s patent in order to continue infringing • Sometimes: • Scenario: • Same as above, but B decides to go to court to defend their product

7. (Direct) Patent Infringement–Options 3 • A sues B. B decides to take the case to trial. What are B’s options?

8. Patent Infringement–Defense: Patent Invalidity 4 • Argue for patent invalidity: • Perform prior art search to find prior art that invalidates the patent claims • Can show that A shouldn’t have gotten patent in the first place • Use claim construction to determine the breadth of the claims • Argue that claims are too broad, invalid • Demonstrate inequitable conduct on A’s behalf by providing evidence for clear intent to deceive the Patent Office • Show that A’s patent has expired

9. Patent Infringement–Defense: Non-infringing Use 5 • Methods of demonstrating non-infringing use: • Perform an infringement analysis comparing A’s patent claims to B’s product features • If not every element of one of A’s patent’s claims found in B’s product, then B is not infringing • Prove that B already had a license for A’s patent • Perhaps B already licensing A’s technology from C, in which case there’s no infringement

10. Patent Infringement–Uncommon Defenses 6 • Prior user defense • Applies only to business method patents • If B can prove use of the patented process at least one year before its application was filed, B is not infringing • Must be an “innocent infringer” i.e., did not know of the patent • Laches • A is not allowed to assert patent rights if it can be shown A delayed enforcement to increase potential damages from B

11. Patent Infringement – Slide-to-Unlock Hypothetical 10 • Assume Apple sued Samsung for infringing the slide-to-unlock patent with its Galaxy Tab. • First, the court would construe the claim language in a Markman hearing to determine the meaning of key terms • Second, the court would use a claim chart to analyze the degree to which the slide-to-unlock patent’s claim read on the Galaxy Tab’s unlock system

12. Slide-to-Unlock Patent –Claim Chart 12 • Element-by-element breakdown of a patent’s claims compared to an allegedly infringing product • Often used by prosecution for infringement analysis • Very useful for visualizing which aspects of the claims are read upon by potentially infringing devices

13. US# 8046721— Slide to Unlock — Claim 1 1. (1.0) A method of unlocking a hand-held electronic device, the device including a touch-sensitive display, the method comprising: (1.1) detecting a contact with the touch-sensitive display at a first predefined location corresponding to an unlock image; (1.2) continuously moving the unlock image on the touch-sensitive display (1.2.1) in accordance with movement of the contact (1.2.2) while continuous contact with the touch screen is maintained, (1.2.3) wherein the unlock image is a graphical, interactive user-interface object (1.2.3.1) with which a user interacts in order to unlock the device; and  (1.3) unlocking the hand-held electronic device if the moving the unlock image on the touch-sensitive display results in movement of the unlock image from the first predefined location to a predefined unlock region on the touch-sensitive display.

15. Slide-to-Unlock Hypothetical (cont.) 12 • The claim chart must clearly indicate that the Galaxy Tab infringes Apple’s patent • What can Samsung do to defend itself?

16. Slide-to-Unlock Patent–Prior Art 16 • Prior art listed as other patents under “References Cited” • However, other undiscovered or undisclosed prior art is often revealed in court • Example: if Apple sued for slide-to-unlock infringement in the U.S., defendant might cite Neonode N1m (early smartphone released in 2005) as prior art in an attempt to invalidate patent

17. Slide-to-Unlock Patent –Prior Art (cont.) 17 Slide-to-unlock function four minutes in

18. Patent Infringement – Hypothetical Samsung Defense 13 • Samsung could: • Try to invalidate the patent with prior art, such as the Neonode N1m’s unlocking system • Argue that the patent’s claims are too broad • Look for evidence of inequitable conduct on Apple’s behalf while filing for the slide-to-unlock patent • Argue that the Galaxy Tab doesn’t include every element of the claims • What do you think would be the result of this case?

19. Summary • Infringments: DoE vs Reverse DoE • Defense of patent infringement: • Invalidity: prior art, claims, inequitable conduct • Non-infringment: infringement analysis, licensing, prior use, Laches