In a patent, broader claims are generally more desireable.  However, the breadth of the claim must be balanced with its validity.  If the claim is too broad, then the courts will hold that the claimed invention is anticipated by the prior art or an obvious variant of the prior art.  If the claim is too narrow, then the patent might avoid anticipation by the prior art or an obviousness attack but competitors may be able to easily design around your narrow patent.  As such, the goal for most clients is to obtain a claim that is broad enough so that competitors cannot easily design a suitable competitive alternative but also can withstand an invalidity attack for being not novel or obvious in view of the prior art.

The following case illustrates a situation where the patentee obtained a broad claim but during litigation was held to be invalid as being an obvious in light of the prior art.  The patent at issue related to a machine for breaking bundles of corrugated sheets of paper.  In order to improve efficiency, multiple bundles would be inserted into a bundle breaker and bent so that the bundles could be broken at a prescored line in the bundles.  Unfortunately, the bundles were not of even height and the platen clamping the bundles would apply uneven forces on the multiple bundles.  In order to alleviate this problem, the patentee obtain a patent directed to a compliance structure which was essentially a fluid filled bladder that conformed to the differing heights of the multiple bundles.

The defendant asserted that the claim was obvious in light of the prior art since the prior art already disclosed a compliance structure.  The Court agreed.  A different machine identified as the Pallmac machine had a compliance structure located “below” the bundles.  The claimed invention required the compliance structure be located “above” the bundles.  The Court held that it was an obvious variant to locate the compliance structure above instead of below the bundles.  Geo M. Martin Co. v. Alliance Machine Sys. Int. LLC (Fed. Cir. Aug. 20, 2010).

Some ways to defend against an invalidity attack would be to draft dependent claims of varying scope.  Dependent claims are narrower compared to independent claims but would be more likely to survive the invalidity attack.  The goal is to draft a claim that would be broad enough to encompass your competitor’s product but narrow enough to survive an invalidity challenge.  You may also want to include multiple independent claims of differing scope and addressing various features of your invention.

I invite you to contact me with your patent questions at (949) 433-0900 or James@OCPatentLawyer.com. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.

In general, a claim can be divided into different elements such as steps A, B and C for a method claim.  For example, a hypothetical method claim for a new way to drive a car may recite “A method for controlling a car comprising the steps of grasping a joystick (i.e., element A), moving the joystick (i.e., element B) and transmitting GPS position of the car (i.e., element C).  When one entity makes, uses, sells or imports a device that incorporates all of the steps A, B and C or performs all of the steps A, B and C then that entity is infringing on the patent.  However, when two different entities collectively practice all of the steps, but not individually then neither entity is infringing on the claimed invention.  For example, if the driver performs steps A and B but a third party does the transmitting step then the driver and the third party do not infringe the method claim.  Accordingly, the claims when drafted should be directed so that the claim can be infringed by one entity. The following case illustrates this issue.

SiRF (alleged infringers) manufactured and sold GPS units to end users.  Global Locate (patentee) held patents related to GPS technology.  The claims of the patents at issue required the step of transmitting data to the end user and processing the data at the GPS receiver.  SiRF contended that they did not perform all of the steps recited in the claims of the patent, namely, the processing step.  SiRF transmitted the data to the end user but the GPS receiver operated by the end user processed the data.  The end users performed the processing steps with the GPS receiver.  Accordingly, it appears that no single entity performed all of the steps of the claimed method.  Nonetheless, the court held that SiRF performed the processing step even though the GPS receivers were being used by the end users.  The reason is that the GPS receivers were built and sold by SiRF enabled and ready to process data.  SiRF’s device automatically performed the processing step.  Hence, the Court held that SiRF infringed the asserted claims.  SiRF Technology v. ITC 2009-1262 (Fed. Cir. April 12, 2010).

I invite you to contact me with your patent questions at (949) 433-0900 or James@OCPatentLawyer.com. Please feel free to forward this article to your friends. As an Irvine Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.

The simplified definition for a continuation, divisional and CIP application involves what is disclosed and what is claimed.  The continuation application is the same disclosure as the parent application with claims similar to the parent application.  The divisional application is the same disclosure as the parent application but with claims directed to different subject matter compared to the parent application.  (e.g., receiver v. transmitter).  The CIP application adds new subject matter to the parent application with claims directed to the new subject matter.

There may be different reasons for filing the child application.  One important reason for filing the child application is to maintain pendency of your application with the Patent Office.  This allows you to broaden or shift focus of your claims as you see how the market and your competitors react to your product.  When your parent application matures into a patent, the claims can be broaden but only to a limited degree for a limited period of time.  Your competitors will look at your patent and attempt to “design around” the claims.  If your competitors are successful in designing around your patent, then the issued patent may be less valuable.

The claims that can be submitted in the pending child patent application can be much broader than the claims in the issued patent.  In this manner, the child application may be used to reintroduced claims so as to cover your competitor’s redesigned product at least to the extent that there is commonality between your patent disclosure and your competitor’s new product.  Without the child patent application, the claims of your issued patent may be broadened but only to a limited degree for a limited period of time which may not be sufficient to cover your competitor’s redesigned product.

Other reasons for filing the child patent application may include continuing prosecution of the claims in the parent application, seeking claims directed to other subject matter in your patent application and adding slight modifications to your invention, etc.

Should you have any questions, please feel free to contact me at 949-433-0900 or James@OCPatentLawyer.com.