How do you identify subject matter upon
which to seek patents? First, it’s important to have a mechanism
in place to identify problems faced by your customers and
your manufacturing organization. Then, develop a
process to identify solutions to these problems. These
solutions may reduce manufacturing costs, increase reliability,
add functionality, improve speed, etc. Ideas generated
in this manner often lead to inventions.
Once an invention
is identified, be disciplined: write down the problem that
the invention solves, what prior art attempts have been
made to solve this problem, what the shortcomings or other
failings of that prior art are, and what your solution
is and why it is better. Mr.
Fish uses a video camera for his disclosures, so even if
you do not write it down, he will extract this information,
record it, and build it into your patent application.
Do
not accept work of a patent attorney who only includes in the patent application
what you write down in the disclosure. Breadth of coverage
arises from breadth of disclosure and breadth of claim interpretation. However,
a broad claim will only be valid if it does not encompass a species in
the prior art and the specification has sufficient detail to enable people
skilled in the art to build the range of embodiments covered by the claim.
It is important for the patent attorney to assist you
in identifying the genus of the invention, i.e., those
characteristics that all species or embodiments in the
genus will share. This is the best way to achieve
broad coverage. If your patent attorney has not attempted
to do this, then he or she has not done a complete job.
Of course, it is not always possible to have complete
knowledge of the entire state of the prior art—so
broad claims always have a risk of being invalidated for
anticipation or obviousness over the prior art.
Patent Litigation -A Specialty of the
Firm
Patent litigation is conducted in this country in the
federal courts:
Cases are tried in the various district courts across
the nation, and appeals rest with the Court of Appeals
for the Federal Circuit, which has had
exclusive appellate jurisdiction since 1982. Patent litigation
can also be
conducted in the International Trade Commission (or "ITC")
pursuant to 19
U.S.C. Sec. 1337 where a domestic industry is deemed "efficient" and
is shown
to be adversely affected by the importation of goods that
infringe a U.S.
patent.
While there are about 18,000 patent attorneys registered
before the United States Patent & Trademark Office,
only about 100 - 150 or so, it has been our experience,
are significantly experienced in patent litigation, whether
representing the assignees of patents, or accused infringers.
The "trial patent bar", as it has come to be
known, is a specialty generally practiced
out of the large intellectual property firms of America's
large cities, and
to a lesser extent (but growing) out of intellectual property
departments of
large general firms. It is the opinion of Falk & Fish
l.l.p. that, as a
general rule, the best patent trial lawyers have significant
experience in
prosecution, because much of the law concerning interpretation
of claims is
dependent on the interpretation of the file history of
the patent in
litigation and how the claims are to be interpreted in
light of the prior art
and statements against interest (so-called "file history
estoppel") made by
the applicant in the Patent & Trademark Office in his/her
attempt to obtain
patent coverage. There are exceptions to this rule, and
a number of the
nation's best patent trial lawyers have little prosecution
experience
personally.
Patent litigation as now practiced in this country is
divided into three
areas--chemical/biochemical/pharmaceutical, mechanical,
and
software/electronics/electrical engineering. Much of the "law" of
patent law
developed by the Court of Appeals for the Federal Circuit,
the eleven
numbered Circuits and the D.C. Circuit Courts of Appeal
before the Federal
Circuit, and the United States Supreme Court took place
in the chemical area.
With the increasing dependence of American industry on
software and
microprocessing, it is clear that the development of the
law will shift to
the software/electronics/electrical engineering end of
the spectrum.
In a nutshell, patent litigation can
be fairly said to be one of the most complex areas of the
law.
Cases that reach trial often
take $1,000,000
-$5,000,000 per patent, and litigation can take, depending
on the forum, from two years to four years to reach trial.
Fees and expenses are a function of the "fight" in
each of the adversaries, the complexities of the issues,
the
complexities of the subject matter, the number of non-privileged
documents
which can be discovered, the number of purportedly privileged
documents the
parties want to fight over, the make-up of the district
court judge and the
number and depth of briefing that Court desires, the number
of witnesses, the
docket of the court, and the administration of the local
rules of the Court.
In each patent case we find the same issues litigated
-- (1) whether the
claims or some of them are "anticipated" by the "prior
art", (2) if not
anticipated, whether the claims would have been "obvious" to "one
of ordinary skill in the art" "at the time the
invention was made",(3) whether the
alleged infringer's accused device, method, composition
or compound
"literally infringers", or (4) if not so "literally
infringing", falls within
the "doctrine of equivalents", (5) if there is
infringement, whether or not
the patent "marking"/"notice" statute
was complied with, and if so (6) the
level of damages; (7) whether the patentee or those in
privity with him/her
committed "inequitable conduct" in the Patent & Trademark
Office during the
prosecution of the patent; and (8) if infringement occurred,
whether or not
it was "intentional".
Patent cases are traditionally tried with the witnesses
being the
inventor/patent applicant, the team of scientists/researchers
who developed
the purportedly infringing device/method/composition/compound,
scientific
experts testifying as to testing of the accused device/method/composition/compound
for infringement, or testifying as to the prior art and
its interpretation at the time the invention was made,
occasionally legal experts on Patent & Trademark Office
practice and the
interpretation of file histories, marketing personnel as
to damages, key
executives as to issues such as intentional infringement,
the patent
attorney(s) who prosecuted the patent in suit before the
PTO, affiants who
testified by affidavit before the PTO during the prosecution
of the patent,
and occasionally experts as to the effect of the invention
in the trade.
Patent litigation therefore is, largely, a "battle
of the experts". Recently,
with the decision of the Court of Appeals for the Federal
Circuit in Markman
v. Westview Instruments, Inc., 52 F.3d 967 , 34 USPQ 1321
(Fed. Cir. l995),
so-called "Markman trials" occurring sometime
before the close of discovery
determine the interpretation and scope of claims. With
this decision, the
power of the jury in patent cases has largely diminished,
as the Court in the
pre-jury "Markman trial" hears the experts argue
over interpretation of the
prior art, file wrapper estoppel, and even infringement
arguments. If the
defendant alleged infringer "wins" the Markman
hearing and the alleged
infringer's view of the claims is upheld, the Markman decision
is almost
inevitably followed by a Motion for Summary Judgment on
the issue of
Non-Infringement. If the Markman hearing is "won" by
the patentee, it is
inevitably followed by serious settlement negotiations
or by a Motion for a
Preliminary Injunction.
The most expensive period in patent litigation generally
occurs during
discovery--each of a party's employee witnesses, as well
as each party's
experts are extensively deposed after a period involving
a production of
documents. Much of the country's law concerning the so-called
"attorney-client" privilege has been developed
during patent litigation, as
the number of attorney-client documents developed during
patent prosecution and the development of the alleged infringer's
device/method/composition/compound are targets of opposing
counsel for
discovery. The construction of lengthy privilege lists
and their exchange
during discovery, so-called "privilege fights" by
adversaries to pierce the
prima facie privilege on account of subject matter waiver
by selected
production, or production to third parties, or the fraud/crime/intentional
tort exception to the privilege, or any number of other
grounds has become
customary in patent litigation. At the end of many pieces
of patent
litigation, the history is much like a chess game, with
one brilliant move by
one party or an error by its adversary causing the fortunes
of the litigation
to shift one way or the other.
In that regard, it has been our experience that only the
most sturdy of
potential litigants should enter the arena. Unlike patent
litigation in many
foreign nations, the primary factor of who wins and who
loses it has been our
experience is largely governed by the following factors,
in descending order:
(1) the "character" or guttiness of the respective
parties, (2) the ability
of each of the parties to handle large invoices month after
month and avoid
artificial constraints in the administration of the litigation,
(3) the
quality of counsel, (4) the favorability or lack of favorability
of the
facts, and last, (5) the law itself. The federal courts,
on a case-by-case
and judge-by-judge basis, can materially decrease or increase
the cost and
complexity of litigation. Because of the heavy investment
of the federal
courts in their time in patent cases relative to other
cases, many judges
have frequent status conferences and hearings, and often
force the parties
into mediation.
In recent years, more and more controversies in the patent
area are decided by arbitration, which in general costs
much less and takes less time than litigation in the courts.
Unless one party or the other has an exceptional
intentional infringement or inequitable conduct argument,
it is our position
that it is in both litigating parties' interest to give
serious consideration
to arbitration.
