US Claim Drafting Christopher J. Palermo 23 May 2006 Hickman Palermo Truong & Becker LLP...

US Claim DraftingUS Claim Drafting

Christopher J. PalermoChristopher J. Palermo23 May 200623 May 2006

Hickman Palermo Truong & Becker Hickman Palermo Truong & Becker LLPLLP

Intellectual Property LawIntellectual Property Law

San Jose, CaliforniaSan Jose, California

www.hptb-law.comwww.hptb-law.com

Hickman Palermo Truong & Becker LLP 2

OverviewOverview

• Phillips v. AWH Corp.Phillips v. AWH Corp., CAFC, July 12, 2005, , CAFC, July 12, 2005, www.fedcir.gov/opinions/03-1269.pdf www.fedcir.gov/opinions/03-1269.pdf

• The specification, prosecution history, and other The specification, prosecution history, and other “intrinsic evidence,” control claim interpretation“intrinsic evidence,” control claim interpretation

• Dictionary definitions, trade usage, expert Dictionary definitions, trade usage, expert opinions, and other “extrinsic evidence” are not opinions, and other “extrinsic evidence” are not considered except in the absence of resolution considered except in the absence of resolution based on intrinsic evidencebased on intrinsic evidence


The Landscape Since The Landscape Since PhillipsPhillips

• Federal Circuit has issued about 15 opinions that Federal Circuit has issued about 15 opinions that address claim interpretationaddress claim interpretation

• 90% have cited 90% have cited Phillips Phillips and relied upon it to and relied upon it to resolve claim interpretation issues.resolve claim interpretation issues.

• The court very recently said that The court very recently said that PhillipsPhillips “stressed “stressed the the dominancedominance of the specification” of the specification”


Five Rules Based on Recent CasesFive Rules Based on Recent Cases



• Beware of limitations in the drawings.Beware of limitations in the drawings.


Ncube Corp. v. Seachange Int’lNcube Corp. v. Seachange Int’l

• Claims recited an “upstream manager” of a serverClaims recited an “upstream manager” of a server• Drawings showed arrows 124, 126 with Drawings showed arrows 124, 126 with

arrowheads on one endarrowheads on one end• Claim dispute: whether data can go “down” from Claim dispute: whether data can go “down” from

the upstream managerthe upstream manager• Held, “upstream” and the arrow do not limit data Held, “upstream” and the arrow do not limit data

movement to one direction: “The specification movement to one direction: “The specification describes only one embodiment, and also describes only one embodiment, and also expresses divergence …”expresses divergence …”



• Beware of limitations in the drawings. Use no Beware of limitations in the drawings. Use no arrowheads, or arrowheads on both ends.arrowheads, or arrowheads on both ends.

• Do not mix method steps into apparatus claims.Do not mix method steps into apparatus claims.


IPLX Holdings v. Amazon.comIPLX Holdings v. Amazon.com

• ““The system of claim 2 [including an input means] The system of claim 2 [including an input means] wherein the predicted transaction information wherein the predicted transaction information comprises X and Y, comprises X and Y, and the user uses the input and the user uses the input meansmeans to either change the predicted transaction to either change the predicted transaction information or accept the displayed X and Y.”information or accept the displayed X and Y.”

• A seller of the apparatus would not know from the A seller of the apparatus would not know from the claim whether it might also be liable for claim whether it might also be liable for contributory infringement because a buyer later contributory infringement because a buyer later performs the methodperforms the method


IPLX Holdings v. Amazon.comIPLX Holdings v. Amazon.com

• Recite structure insteadRecite structure instead• ““The system of claim 2 [including an input means] The system of claim 2 [including an input means]

wherein the predicted transaction information wherein the predicted transaction information comprises X and Y, comprises X and Y, and wherein the input and wherein the input means comprises means for receiving user means comprises means for receiving user input indicating input indicating either either a a change change to to the predicted the predicted transaction information or transaction information or user input indicating user input indicating acceptance of acceptance of the displayed X and Y.”the displayed X and Y.”

• Full discussion: CIPA Journal, January 2006Full discussion: CIPA Journal, January 2006




• Do not mix method steps into apparatus claims. Do not mix method steps into apparatus claims. All “mixed” claims are now suspect.All “mixed” claims are now suspect.

• If separate parts of a process could be If separate parts of a process could be implemented in separate countries, use system or implemented in separate countries, use system or apparatus claims instead.apparatus claims instead.


NTP, Inc. v. Research in Motion Ltd.NTP, Inc. v. Research in Motion Ltd.

• Claims to an electronic mail system reciting Claims to an electronic mail system reciting equipment located in the US and a relay in Canada equipment located in the US and a relay in Canada are infringed by US usersare infringed by US users– ““infringing infringing use use of a claimed system occurs in the place of a claimed system occurs in the place

at which the system as a whole is put into service”—at which the system as a whole is put into service”—i.e., the end user’s locationi.e., the end user’s location

• Claims to a process implemented with the same Claims to a process implemented with the same equipment and relay are not infringedequipment and relay are not infringed– All steps of the method must be performed in the USAll steps of the method must be performed in the US




• Do not mix method steps into apparatus claims. Do not mix method steps into apparatus claims. All “mixed” claims are now suspect.All “mixed” claims are now suspect.

• If separate parts of a process could be If separate parts of a process could be implemented in separate countries, use system or implemented in separate countries, use system or apparatus claims instead.apparatus claims instead.

• If specification discloses If specification discloses one one embodiment, claim embodiment, claim cannot be broader than that embodimentcannot be broader than that embodiment


Lizardtech, Inc. v. Earth Resource Lizardtech, Inc. v. Earth Resource Mapping, Inc.Mapping, Inc.

• Specification describes Specification describes one way one way for compressing for compressing digital images by using a digital images by using a seamlessseamless discrete discrete wavelet transform (DWT).wavelet transform (DWT).

• Claim 21 covers all DWTs—does not recite Claim 21 covers all DWTs—does not recite “seamless”“seamless”

• ““The trouble with allowing claim 21 to cover all The trouble with allowing claim 21 to cover all ways of performing DWT-based compression ways of performing DWT-based compression processes that lead to a seamless DWT is that processes that lead to a seamless DWT is that there is no support for such a broad claim in the there is no support for such a broad claim in the specification.”specification.”


Lizardtech, Inc. v. Earth Resource Lizardtech, Inc. v. Earth Resource Mapping, Inc.Mapping, Inc.

• Public policy and the notice function of claims:Public policy and the notice function of claims:• Inventor will not be given claim scope far greater Inventor will not be given claim scope far greater

than what a skilled artisan would understand the than what a skilled artisan would understand the inventor to possess or greater than what is enabledinventor to possess or greater than what is enabled

• While a claim can use a broad term to encompass While a claim can use a broad term to encompass 2 or more embodiments given in the specification, 2 or more embodiments given in the specification, when only 1 way is disclosed the use of broader when only 1 way is disclosed the use of broader terms may lead to invalidityterms may lead to invalidity



• Beware of limitations in the drawings. Use no arrowheads, Beware of limitations in the drawings. Use no arrowheads, or arrowheads on both ends.or arrowheads on both ends.

• Do not mix method steps into apparatus claims. All Do not mix method steps into apparatus claims. All “mixed” claims are now suspect.“mixed” claims are now suspect.

• If separate parts of a process could be implemented in If separate parts of a process could be implemented in separate countries, use system or apparatus claims instead.separate countries, use system or apparatus claims instead.

• If specification discloses If specification discloses one one embodiment, claim cannot be embodiment, claim cannot be broader than that embodimentbroader than that embodiment

• A concretely expansive specification may expand the A concretely expansive specification may expand the scope of an unintentionally narrow claimscope of an unintentionally narrow claim


Lava Trading, Inc. v. Sonic TradingLava Trading, Inc. v. Sonic Trading• A data processing method for providing trading

information to traders in a security or commodity from two or more alternative trading systems, comprising the steps of: receiving order book information from each participating alternative trading system in order book information protocols native to the particular alternative trading system; converting the information to a common system order book protocol; integrating the order book information from each alternative trading system into a single order book; distributing the combined order book to the traders in the common system order book protocol; and displaying said combined order book to the traders


Lava Trading, Inc. v. Sonic TradingLava Trading, Inc. v. Sonic Trading• Specification described displaying only a subset of

the combined information• The claim preamble recited “a security or

commodity,” suggesting fewer than all• Potentially problematic claim was saved by an

expansive specification with several different examples


Nystrom v. Trex Co. Inc.Nystrom v. Trex Co. Inc.

• Claim: “A board for use in constructing a flooring surface for exterior use, said board having …”

• Specification exclusively described boards cut from wood logs and addressed problems of water penetration into wood. Drawings show “grain”

• Trex made plastic resin-based synthetic boards not cut from logs

• Potentially problematic claim was not saved by inventor’s failure in the specification to identify synthetic lumber as an alternative

• Last paragraph of specification was “boilerplate” broadening language—ignored



• Beware of limitations in the drawings. Use no arrowheads, Beware of limitations in the drawings. Use no arrowheads, or arrowheads on both ends.or arrowheads on both ends.

• Do not mix method steps into apparatus claims. All Do not mix method steps into apparatus claims. All “mixed” claims are now suspect.“mixed” claims are now suspect.

• If separate parts of a process could be implemented in If separate parts of a process could be implemented in separate countries, use system or apparatus claims instead.separate countries, use system or apparatus claims instead.

• If specification discloses If specification discloses one one embodiment, claim cannot be embodiment, claim cannot be broader than that embodimentbroader than that embodiment

• Sprinkle the specification with creative, possible Sprinkle the specification with creative, possible alternatives beyond what the inventor presently alternatives beyond what the inventor presently contemplatescontemplates


Claim Examples


Thank you

Christopher J. PalermoHickman Palermo Truong & Becker LLP

2055 Gateway Place Suite 550San Jose, CA 95110

[email protected]

US Claim Drafting Christopher J. Palermo 23 May 2006 Hickman Palermo Truong & Becker LLP...

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