Considerations for Patent Protection of IT and Telecommunications Inventions Global IP Convention 2011 Susan Perng Pan span@sughrue.com April 28-30, 2011
Reasons for patenting – market protection i4i v. Microsoft (93 USPQ2d 1943, Fed. Cir. 2010) � A method for producing a first map of metacodes and their addresses of use � in association with mapped content and stored in distinct map storage means, the method comprising: providing the mapped content to mapped content storage means; � providing a menu of metacodes; and � compiling a map of the metacodes in the distinct storage means, by � locating, detecting and addressing the metacodes; and providing the document as the content of the document and the metacode � map of the document. Patent holder i4i was a software consulting company. i4i � customers would hire i4i to develop and maintain customized software i4i was not selling computer packages per se for consumer � use, but semi-tailored service software Jury awarded i4i $200 million in reasonable royalty damages � Also award $40 million in damages for ‘willful infringement.” � i4i also awarded preliminary injunction �
Reasons for patenting – monetization NTP v. Research in Motion (75 USPQ2d 1763, Fed. Cir. 2005) � � “The Blackberry case” At district court, patent holding company NTP prevailed in � patent litigation suit against Blackberry manufacturer Research in Motion At lower court level, NTP was awarded a damages award of � $53.7 million in combined royalty payments and damages for willful infringement District court also granted NTP a permanent injunction � requiring Research in Motion to cease infringement of NTP patents NTP and Research in Motion settle dispute for $612.5 million �
Reasons for Patents - Setting the playing field for negotiation purposes i2 v. SAP (E.D. Texas Docket No. 2:06-CV-352) � USP 5,764,543 and 5,930,156 (Extensible model network � representation system for process planning) USP 5,983,194 (Planning coordinating systems for separate factory � planning systems and methods therefor) USP 6,055,519 (Framework for negotiating and tracking sales) � USP 6,167,380 and 7,085,729 (System and method for allocating � manufactured products to sellers) USP 6,188,989 and (System and method for managing available � to promised product) SAP v. i2 (N.D. Calif. No. 07:04187) � USP 6,407,761 (System and method for the visual customization � of business object interfaces) USP 6,750,766 (Alerts monitor (indicating critical conditions in � warehousing function)) USP 7,222,369 (Role-based portal to workplace system) � Parties agree to settle both disputes with one time � payment of $83 million from SAP to i2. Which party had more patents “in play?” � Whose patents appear more critical to management of � data?
Types of claiming formats recognized in U.S. patent law applicable to IT and Telecom patents Apparatus � Individual processing elements (receiver or data gatherer, � encryption component, one or more processing engines) System � Comprehensive system including distributed elements for receiving � data, processing or routing, and transmission Method � Describes steps of carrying out the invention, can be a few steps � (component) or more comprehensive step of steps (system) Article of Manufacture (computer readable medium) � A tangible computer-readable medium embedded with the � program causing as computer to perform steps of (A,B,C) or to act as components (A,B,C)
Different classes of claims raise different issues for purposes of infringement analysis � Apparatus claims tend to be more self-contained – usually exist at a single geographic location � Computer-readable medium claims tend to be more self- contained – usually exist at a single geographic location � System claims can have elements distributed across different geographic locations, including in different countries � Method claim steps can be performed either in a single geographic location, or can be performed in different geographic locations including different countries � Steps of a method claim can be performed by different parties
Different classes of claims raise different issues for purposes of infringement analysis Direct infringement: 35 U.S.C. 271(a) Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.
Different classes of claims raise different issues for purposes of infringement analysis Infringement based on importation: 35 U.S.C. 271(f) � (1) Whoever without authority supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer. � (2) Whoever without authority supplies or causes to be supplied in or from the United States any component of a patented invention that is especially made or especially adapted for use in the invention and not a staple article or commodity of commerce suitable for substantial non- infringing use, where such component is uncombined in whole or in part, knowing that such component is so made or adapted and intending that such component will be combined outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.
Different classes of claims raise different issues for purposes of infringement analysis Infringement based on importation: 35 U.S.C. 271(g) Whoever without authority imports into the United States or offers to sell, sells, or uses within the United States a product which is made by a process patented in the United States shall be liable as an infringer, if the importation, offer to sell, sale, or use of the product occurs during the term of such process patent.
Example of System Claim – NTP v. RIM A system for transmitting originated information from one of a plurality of originating processors in an electronic mail system to at least one of a plurality of destination processors in the electronic mail system comprising: at least one gateway switch in the electronic mail system, one of the at least one gateway switch receiving the originated information and storing the originated information prior to transmission of the originated information to the at least one of the plurality of destination processors; a RF information transmission network for transmitting the originated information to at least one RF receiver which transfers the originated information to the at least one of the plurality of destination processors; at least one interface switch, one of the at least one interface switch connecting at least one of the at least one gateway switch to the RF information transmission network and transmitting the originated information received from the gateway switch to the RF information transmission network; and wherein …
Example of System Claim – NTP v. RIM � The Federal Circuit held that there was direct infringement of the system claim even though a relay device, corresponding to the “interface switch” of the asserted claim was located in Canada and not the United States � The determination of infringement was not made under the provision that the system was “made” in the U.S. but that the system was being “used” in the U.S. � “use” of the system is where the system as a whole is put into service and where its beneficial use is obtained
Example of Method Claim- NTP v. RIM A method for transmitting originated information from one of a plurality of originating processors in an electronic mail system to at least one of a plurality of destination processors in the electronic mail system comprising: transmitting the originated information originating from the one of the plurality of originating processors to a gateway switch within the electronic mail system; transmitting the originated information from the gateway switch to an interface switch; transmitting the originated information received from the gateway switch from the interface switch to a RF information transmission network; transmitting the originated information by using the RF information transmission network to at least one RF receiver which transfers the originated information to the at least one of the plurality of destination processors; and transmitting other originated information with the electronic mail system from one of the plurality of originating processors in the electronic mail system to at least one of the plurality of destination processors in the electronic mail system through a wireline without transmission using the RF information transmission network; and wherein…
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