Copyright 2010 Schwegman, Lundberg & Woessner. P.A. All Rights Reserved. Assessing FTO on a Budget...

Copyright 2010 Schwegman, Lundberg & Woessner. P.A. All Rights Reserved.

Assessing FTO on a Budget

Part 1 Analysis before the FTO


Before the FTO

• Basic Research• Preliminary Analytics• Preparation for the FTO


Basic Research

• Competitors• Fields of technology

– Subordinate technologies– Analogous areas of technology

• Names of individuals known in your market• What do you want to do?


Patent Analytics Goals

• What is available• What is useful• What is cost effective


Patent Analytics

• Search• Statistical or Bibliographical Analytics• Ontology or Classification of Patents• Visualization• Derivative Analytics


Search

• Commercial Services– Thomson, Reed Elsevier, Questel

• Freemium/Free– Google Patents, Freepatents, Sumo Brain

• Iterative Identification of– Competitors– Patents/Patent Applications/Papers/Etc– Researchers and other relevant inventors


Statistical/Biographical Analysis

• Graphs/charts

• Trends• Dashboards and Monitoring

Who What When Where How much?

Inventors Portfolio Priority Countries Citation*

Assignees Technologies Transfers Regions Oppositions*

Litigants Family Expiration Cities Reported

*Proxy value


Dashboards

9

Acme


Activity Monitoring


Post Grant Monitoring

Research Discern Act

Post Grant Statistics Post Grant Options File Post Grant Action

Examiner Statistics Appeal Options File PTAB Action

PTAB Statistics PTAB Actions


Ontologies / Classifications

• Family– INPADOC– Derwent® World Patent Index

• Field of Technologies– International Patent Classifications (IPC)– USPTO Classifications– Derwent®

• Custom Functional Ontologies


Visualization of Results

• Citation Trees• Key Word Topographical Maps• Network / Relationship Mapping• Heat Mapping / Landscaping


Citation Trees


Key Word Topographical Maps


Network/Relationship Mapping


Heat Maps / Landscapes


Derivative Analytics

• Merger of Financial Data • Development of Efficiency Studies• Patent Bionics

– Human Analysis with Machine Assistance– Claim Abstraction– FTO/White Space /Licensing Analysis– Design Around /Competitive Analysis


Merger Of Financial Data

• Extract financial from accounting system • Correlate them to unique matters

– Derive matter / cost studies– Derive portfolio / cost studies

• Correlate law firm bills to issuance rates

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Efficiency Analysis


Art Unit Efficiency Analysis


Patent Bionics

• Human analysis with machine assistance– Claim mapping and abstraction is key to

• FTO analysis• Engineering design around• Patent strategy white space • Inbound and outbound licensing analysis• Gap analysis in portfolios• Mapping product literature to claims

– Interact with the map of claim abstraction

22


Introduction to Claim Mapping

• Claims largely define a patents value• Claims between patents may be

– Abstracted– Harmonized– Mapped

• Thus claims may be assigned ontologies– Similar to case law headnotes

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Headnotes

(+ ATTORNEY)

Scope Concepts•What the claims say about the technology

•Limitations•Varying Levels of Abstraction

Abstracting: Case Law vs. Patent Claims


Output of Abstracting

• Interactive Excel spreadsheet– Usable by anyone

• Outside Patent Counsel• Inside Patent Counsel• Engineers – Most Critically!• Best Practice: Outside Patent Counsel + Inside Patent Counsel + Engineers

– Embeds “All Elements Rule” for infringement• If a scope concept in claim is absent from the design, can rule out that claim• If the scope concept appears in many claims, can eliminate many claims• Exclusionary tool: patent attorney reviews all claims that have not been

ruled out

– Easily updatable as new patents issue• Chart once, use forever

Output of Abstracting: ClaimBot®


Comparison: Traditional vs. ClaimBot ClaimBot® FTO Process: Parallel Traditional FTO Process: Serial

Design Change

Done

No

Yes

Start Over Map

Scope Concepts

Design

Features

Design Change Merely ChangesApplicable Concepts

Since Concepts Are Mapped ToClaims, You’re Almost Done!

First concept of first claim

Claim Analysis v. Claimbot Abstraction


Output of Abstracting: Spreadsheet

Claims Needing Further Review are Automatically Identified (in red)

Scope Concepts (minimal client time

needed)

Potential Relevance(“1,” 2,” or “3” – clientprovides input aboutpresent & future design)

Individual Patents(separated by violet

and white columns)

Independent claims

Current Interest

Future Interest

Not of interest

Key

Output of Abstracting: Interactive Spreadsheet


Assessing FTO on a Budget

Part 2 FTO on a Budget


1. What is an FTO clearance review?2. Necessity of an FTO clearance review.3. Situations that trigger an FTO clearance review, and timing.4. The FTO process.5. Cost and time considerations.6. Drawbacks with FTO process.7. Strategies resulting from an FTO analysis after identifying relevant patents.8. Patent Infringement (distinguished from Patentability/Invalidity).9. FTO scenarios.10. Final thoughts.

Overview of Today’s FTO Discussion


Definition:

"Freedom to operate", abbreviated "FTO", refers to whether a particular action, such as commercializing a product, can be done without infringing valid intellectual property rights of others.

What is an FTO clearance review?


• Expired patents should be considered

• Infringement analysis (comparison of claims and technology)

What is an FTO clearance review?


• Blocking patents (injunction).

• Patent infringement (monetary damages).

• Recent (past 10 years) surge of newly issued U.S. patents. Raises significance to conduct FTO clearance review.

• Non-practicing entities (NPEs) or “Patent Trolls.” Can’t simply cross-license or counter sue.

Necessity of an FTO clearance review


• Clearing prospective in-licensed (or acquired) technology– Before in-licensing (acquiring) technology

• Clearing R&D pipeline (technology)– Before launching product in the U.S. market– During R&D (the “dance” to continually clear evolving R&D technology)– At any time

• Newly issued, published, expired and/or identified patents

Situations that trigger an FTO clearance review


• After R&D – Can minimize costs– May force substantial redesign if applicable art is found

• At product launch – Substantial redesign of a product slated for release, delay of release,

retooling of manufacturing processes and lines– Withdrawal and/or reworking of marketing materials and strategies– Bad PR for the manufacturer

FTO during R&D, after R&D or at product launch?


• During R&D – Best practice – Generally will result in a clear design during R&D with possible design

changes as additional patents issue or applications publish– Likely the most expensive and time consuming scenario with counsel

because it requires an iterative review of multiple permutations of a design and repetitive reexamination of references applicable to the design

FTO during R&D, after R&D or at product launch?


• Patent searching – Issued U.S. Patents– Published U.S. Patent Applications– International searching – May require interaction with foreign agents

to complete a search (especially in developing countries where electronic tools are scarce); also an added expense

• Review and triage patent documents (filtering out irrelevant patents)

The FTO process


• Infringement/non-infringement analysis• “All Elements” Rule• Broad/dominating claims vs. narrow/subservient claims• Claim interpretation and Markman Hearings• Doctrine of equivalents (DOE)• 35 U.S.C. § 271(g) issues (“processing” claims)

• “Materially changed”• “Non-infringing use”• Burden of proof shifts

The FTO process


• Drafting the document (opinion or clearance summary) memorializing attorney analysis, and communicating analysis to client

• Document is updated (and additional searching performed) as relevant patents expire, publish and/or issue (“continued prosecution risk”)• May need to perform a search again, as there are often continuation and

divisional patent applications• Need to search for reissued claims that could be broader than what was

originally cleared

The FTO process


• Recent (past 10 years) surge of issued U.S. patents increases number of patents to review – large number of patent documents to be aware of

• Patent searching, time and costs

• Review and triage patent documents, time and costs

• Drafting the document, time and costs

• Updating searching, time and costs

• Updating document (opinion or clearance review), time and costs

Cost and time considerations


• Accuracy and comprehensiveness of searching

• Accuracy of analysis of attorney work product– Technical– Legal

• Timing (when to perform FTO)

• Comprehensiveness and analysis of attorney work product– Typically only 1-2 “hooks” of non-infringement provided– Time-consuming and expensive to document all grounds for non-infringement

where there is a large number of relevant patents

Drawbacks with the FTO process


• Time and costs incurred (including updates)

• Ease/difficulty in understanding analysis and attorney work product by:– Executive or manager– Technology officer (scientist/engineer)– Patent attorney/agent– Business development officer– Licensing manager– Product manager

• “Irrelevant” patents never completely eliminated, due to evolving technology of R&D



• “Key” or problematic patents not flagged for attention (or follow-up)

• Personnel involved with FTO process (individuals with key attributes often do not contribute)

• “White space” opportunities (effective means to identify new technology development opportunities) typically not provided

• Large scale (500+ patents) patent review and clearance is relatively inefficient and costly



One Approach to FTO: ClaimBot™ Claim Matrix


• Purchase the patent (or assignee), or in-license the patent• Cross-license the patent• Design-around the patent• Patent pools with the patent• Patent infringement and subsequent litigation

– Patent non-infringement position– Patent invalidity position

• Reexamination or post-grant proceeding• “Ostrich” approach• Technology is clearly non-infringing, and the client proceeds “as-is,” on the basis

of the FTO clearance review and analysis

Post FTO Strategies


Contrast Patentability and Infringement

X X X X XX X

COMPANY A’S GRANTED CLAIMS

COMPANY A’S PUBLISHED DISCLOSURE

Z

Z THIS AREA COULD BE PATENTABLE – IT WOULD NOT BE INFRINGING


Contrast Patentability and Infringement

X X X X XX X

COMPANY A’S GRANTED CLAIMS

COMPANY A’S PUBLISHED DISCLOSURE

Z THIS AREA IS INFRINGING -- BUT IT COULD STILL BE PATENTABLE

Z


• Patent claim recites a specific use of a “protein.” Your device uses (same use) a novel protein having 75 amino acids. Is there an infringement concern?

• Patent claim recites specific protein (both broadly and narrowly). Patent specification discloses many uses of the protein, none of which include your use. Is there an infringement concern for your specific use of the protein?

• Scientific literature discloses a similar protein for a similar use. Is there an infringement concern for your specific use of the protein?

• Your device (assay) includes a specific protein for a specific diagnostic use. The device is patented. Is there an infringement concern to commercialize the device?

FTO Scenarios


• Patent claim recites (a wholly different) use of a specific protein. Patent specification states that the invention also includes the protein per se. Is there an infringement concern to commercialize your (wholly different) use of the protein?

• Patent claim recites (amongst other limitations) the term “protein.” The patent specification provides an extensive list of suitable proteins, none of which is the specific protein you plan to commercialize. Is there an infringement concern to commercialize your specific protein (assuming all other claim limitations are met)?

• An expired patent claims a specific protein, and claims and describes a general use of the protein. You want to use that same protein for a very specific use (which falls under the general use). Is there an infringement concern to commercialize your (specific) use of the protein?

FTO Scenarios


Final Thoughts

Copyright 2010 Schwegman, Lundberg & Woessner. P.A. All Rights Reserved. Assessing FTO on a Budget...

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Transcript of Copyright 2010 Schwegman, Lundberg & Woessner. P.A. All Rights Reserved. Assessing FTO on a Budget...