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 [email protected]. 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.