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Invalidity and Infringement Analysis Courses: Certified Patent Analysts**

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This document provides an introduction and overview of the Patent Infringement Analysis Process and the courses offered to teach this process.  The Patent Infringement Analysis Process is conducted to identify, verify, and provide evidence that a patent is being infringed.  A patent is a government granted right to exclude others from practicing a patented (claimed) technology.  However, a patent does not give its owner the right to practice their own invention if doing so infringes the patents of others.  Not having a right to practice your own invention creates a fascinating world of layered rights to exclude others from manufacturing products and services, but manufactures of products and services must traverse these layered rights carefully to avoid significant liability.  Even after the government has granted a patent, it may be routinely infringed by others.  Since it is not a criminal act to infringe a patent, a patent owner can’t expect the police to unilaterally identify and stop infringement.

Instead, patent owners need to enforce their rights against infringers using various government sanctioned procedures.  For example, in the USA, the federal courts can award damages to the patent holder for past infringement and may also issue an injunction which stops the infringer from continuing future infringement.  A patentee may also petition the International Trade Commission (ITC) to stop infringing products from being imported into the USA.  Often, before filing an action in the federal courts or the ITC, the patent owner will ask their lawyer to contact the infringer to negotiate a settlement.  A negotiated settlement will allow all parties to save the significant investment required for litigation.  If a settlement is not reached, the patent holder’s lawyer may file an action and proceed to litigation.

Often, before settlement negotiations begin, the patent lawyer will gather evidence of infringement to prove the seriousness of their position.  The courses described below will teach you how to document the evidence the lawyer will need to prove their infringement claim.  It will teach how to document the evidence in a deliverable called an Infringement Claim Chart (or Evidence of Use Chart) and how to spot and comment on any issues spotted during your analysis.

If you are working for the lawyer for the patent owner, he will be looking for your arguments about why the patent is infringed.  If you are working for the lawyer of the accused infringer, she will be looking for your arguments about why the patent is not infringed.  All of the following business contexts will typically require an infringement analysis and claim chart on both sides of the transaction.  So make sure you know who the lawyer is working for before conducting your analysis and preparing the described deliverables.

Lawyer Motivation: Business Context

Freedom to Operate: A freedom to operate is a study performed by a company before releasing a product in order to see whether their product will infringe patents owned by others.  Some companies employ patent lawyers to conduct a freedom to operate study and some of  those lawyers have an engineer conduct the preliminary search and or mapping of evidence of infringement.  During a freedom to operate study, the lawyer first determines how the proposed product or service will operate, and then, the lawyer studies patents in that domain to see if any of the patents owned by others would be infringed by the proposed product or service.  Once risky patents are identified, the engineer may have recommendations about how to design around the those patents so the product will not infringe upon release.  After the lawyer determines whether the design around recommendations are substantial enough to avoid infringement, the lawyer will discuss these design changes with their client manufacturer.

Eyes Closed Development:  Some companies just develop and sell products and services without conducting freedom to operate studies.  Some products are so complicated and/or in such crowded fields, that it would take forever to design around all the patents.  This could be the case with complex systems such computers and jet airplanes.  Instead, the manufacturer may use statistical analysis to estimate how much they will likely have to pay in patent licensing fees and infringement damages, and will build that estimated expense into the product pricing.  One benefit of eyes closed development is that you are less likely to have to pay treble damages for willful infringement.  If you don’t know about a patent, an accusation of willful infringement is less likely to be successful.  A company operating in this way will simply wait for the patent owners to approach them with a letter asking the manufacturer to stop infringing a patent or asking for royalties for past and future infringement.  Once the infringer receives the letter, then they must design around the patent in order to avoid treble damages that may accrue if they continue to infringe after being warned.  A patent analysis team that includes both engineers and lawyers, is arguably the best way to neutralize these threats when they occur.  Patent lawyers are necessary to make recommendations to their client about a strategy, but an engineer is better suited to do the initial analysis on many issues.  As a lawyer, if you have a team of engineers, the aggregate savings to your client may be significant, especially if the engineers reside in a country with lower salaries.

Due Diligence: The lawyer could be conducting a due diligence study on the patent before recommending whether their client purchase the patent.  The lawyer’s client may be interested in buying the patent, buying the company that owns the patent, or lending money secured by the patent.  Before entering into such a transaction, the lawyer will want to know if the patent is presently being infringed by anyone.  Even if the patent has value, the lawyer may want to know any arguments of non-infringement or invalidity, in order to factor in the  risks of ownership or otherwise gain leverage for their client in acquisition or security interest negotiations.

Offensive (Infringement) Review:  The patentee may want to assert their patent against anyone using their claimed technology with the goal of creating royalties.  The patentee may also want to stop anyone else from using their technology so they are the only provider and can increase their pricing strategy.  Having a temporary monopoly in the marketplace is one of the original intents of the US constitution.  The idea was to reward inventors with temporary monopoly profits in return for for teaching the world how to perform the invention.  During the patent term, the patent owner has the right to either stop everyone from using the invention and/or asking anyone using their invention to pay reasonable royalties.

Defensive (Infringement) Review:  Defensive review is similar to the offensive review except that the analysis is done by the alleged infringer instead of the patent owner (i.e., patentee).  The alleged infringer needs to verify whether the patent is valid and infringed before agreeing to pay any royalties to the patentee.  The lawyer will need to understand the most significant arguments before recommending a course of action to their client.

Invalidity Analysis:  Even if the lawyer recommends licensing or acquiring the technology, the royalties or price paid will vary substantially based upon the perceived possibility of being able to invalidate the patent during litigation.  So the lawyer needs the best data available to help the client make these business decisions. Before the patentee spends significant resources developing infringement arguments against someone believed to be using the claimed technology, the patentee’s lawyer will want to make sure the patent will survive a challenge in court.  Under US federal court rules and procedures, if a patent is asserted without reasonable investigation into the facts, the patentee or their lawyer could be subject to certain sanctions, such as paying the opposing party’s legal fees.  The patentee’s lawyers will want to conduct an investigation to verify that the patent is both valid and infringed before any action it is taken.  Thus, the evidence of use chart is only as strong as its weakest link.  If an infringed patent can be proved invalid based upon defects in written description or enablement, or it is anticipated or rendered obvious by the prior art, then it ultimately won’t matter that you have a strong evidence of use chart.  Any lawyer filing a lawsuit without conducting an invalidity analysis, is putting themselves and their client at risk.  However, many lawyers will do everything but file a lawsuit before conducting an invalidity analysis.  In that case, the lawyer may instruct you to hold off on the invalidity analysis until after license negotiations have failed and they are about to file the lawsuit.  So, although all of the below concepts are important for you to understand, not all of the below processes will necessarily be performed for each case.  The report-requesting lawyer remains in charge and will let you know when to do which of the following described processes.

Sub-Process Steps and Training Phases (Courses)

There are literally hundreds of issues that the lawyer may want you to note in your analysis and report.  These courses are designed to give you a working vocabulary and understanding of what the lawyers desires for each case.  Each of these issues may also have multiple subtle nuances that occur to the lawyer upon further investigation and research.  It is not the intention of these training materials to teach you every single issue or subtle nuance, but you do need a very strong working understanding of the main issues.  Even an expert patent litigator would not be able to memorize all the issues.

The purpose of these courses is to (1) familiarize you with most of the significant issues, (2) help you understand whether the evidence in front of you proves (a) that a patent is invalid, or (b) that a patent is infringed, (3) provide you with a step-by-step processes that you can use to complete an invalidity analysis and or an infringement analysis, (3) provided you with example process documents, issue checklists, sample comments (for spotted issues), and quality metrics for confirming process compliance, and (4) give you experience completing sample templates and quality metrics.

This is an art not a science, so please do not assume you are an expert just because you completed these courses.  Even a new patent lawyer properly licensed in their relevant jurisdiction, should practice these processes under the supervision of an expert patent litigator for several years before expecting to achieve consistency and quality.  These courses are designed to create a common interface upon which an engineer and a lawyer can communicate.  The lawyer needs to understand what the engineer knows and does not know.  These materials give a jumping off point so the engineer understands what the lawyer is saying and so the engineer can speak meaningfully with the lawyer.  They also show the lawyer what is not taught so the lawyer can supplement these materials if the lawyer wants to assign even more critical work to the engineer.

The Patent Infringement Analysis Process Flow Chart:

As shown above in Figure 1, the patent analysis process has been broken down into phases that will be taught as separate courses.  Priority Law Course 100 is the most fundamental concept upon which all other concepts rely.  For that reason, Priority Law 100 is shown as the context from which all other concepts are understood.  Once you understand Priority Law 100, you can begin to study other concepts.  We then teach the Invalidity Analysis process 200 followed by the Infringement Analysis process 300.  As shown in Figure 1, the Invalidity Analysis process 200 has been broken down into three courses.  These three courses include (1) the Specification Chart Process Course 220, (2) the Prior Art Search Process Course 240, and (3) the Reference Chart Process Course 260.  Finally, the Infringement Analysis process 300 has been broken down into two courses, the Infringement Evidence Search Process Course 320 and the Infringement Chart Process Course 340.  Each course is discussed briefly below:

Priority Law Course 100: 

The Priority Law course teaches one of the most important and fundamental subjects in Patent Law.  These concepts may appear simple at first glance, but they are actually some of the most complex.  Although there are hundreds of concepts covered in this course, the level of complexity of the law in this area is shown by these two examples:

1. How to properly set the multiple 35 USC 102 searches dates for each claim of a given target patent including considering proper support for each claim if there is a priority claim to earlier filed family members including both foreign, domestic, and PCT.  Also, how the AIA changes things, and how to integrate the AIA with existing priority law for the next 20 years, including practical examples.

2. How to determine whether or not an identified reference qualifies as prior art under at least one of the sections of 35 USC 102 including considering whether or not invalidating language has continuous support to earlier filing dates.  Also, how the AIA changes prior art admissibility law and how to integrate the AIA with prior existing law for the next 20 years.

This course teaches analysts how to properly set these dates as they read the most significant issues that arise under statutory law, federal case law, federal regulations and the MPEP.

There is almost nothing more aggravating to a patent lawyer than to realize that (1) a search needs to be redone because the search date for a claim was set incorrectly, or (2) a reference does not actually qualify as prior art because of some nuance in law that was missed in the study.  The lawyer may not have time to recover from such a mistake, and her confidence in your abilities might be damaged forever if the mistake does not materialize until raised by the opposing party.  These two main issues along with hundreds of other nuances that you absolutely must memorize in order to deliver on time … are explored and tested in this course.

In Figure 1, the Priority Law Course is shown in light blue with the other courses contained therein.  All other processes of an invalidity or infringement analysis exist in a context of priority law.  When commercial activity performs a patent claim it either invalidates or infringes that patent claim.  Priority law is the intellectual puzzle that must be carefully understood to make this determination.

Lawyers have time to ponder these issues while they sit thoughtfully at their desk.  But a patent analyst may need to make decisions within two or three seconds, many times per day.  If any one decision is wrong, they will lose credibility when the lawyer catches their mistake.  For this reason, this course starts out as a theoretical analysis of the statutes, CFRs, MPEP, and case law, in order to give you a reasoned understanding of the decisions you must make.  However, it quickly evolves into a methodology that will require you to test your understanding of dates on over three hundred scenarios in a certification exam lasting only a few hours.  With this solid understanding of priority law, you will go sailing into the following courses.

 

Invalidity Analysis Process 200

The Specification Chart Process Course 220:

The first step that lawyers often take when conducting a patent invalidity analysis is to prepare a specification map for the target patent. The lawyer uses the specification map to determine whether the target patent satisfies legal requirements such as written description, enablement, subject matter eligibility, claim definiteness, prosecution history estoppel, etc.  The specification chart also helps the lawyer construe (i.e., determine) the legal meaning of the claims. The course walks the student step-by-step through the data fields of example specification charts and teaches how to complete each field.  Finally, the course shows how to set the search date for each claim in the patent studied.

Participants read statutory law, federal case law, federal regulations and the MPEP to provide context for the issue checklists.  The course teaches the law behind the specification chart process so students can better identify and present legal issues to the report requesting lawyer.  The course includes issue checklists, example templates, example comments, the preparation process, practical and theoretical questions, graded assignments, sample test questions, and a final examination.

The Prior Art Search Process Course 240:

Once the search dates and the meaning of each claim is established from the specification map process (see above), the prior art search begins.  The Prior Art Search Process Course explores various techniques that can be used to find the best prior art.  Search techniques explore how to find relevant patent and non-patent literature, along with the patentee’s own activities, if any.

The search process is recursive in nature.  As references are discovered in the search, those references are scanned to see which claim elements, if any, are missing from the reference.  This information is used to alter the search strategy.  In practice, this prior art search process is tightly coupled with the following reference chart process, since references are scanned during the search in order to verify whether they anticipate or merely render the claim obvious.

The Reference Chart Process Course 260:

The final step in the invalidity analysis process is completing a reference chart.  The reference chart maps the most relevant parts of prior art references in a column adjacent to the claim language.  The course explores the law of anticipation, inherency, and obviousness which is used to determine whether or not a target patent is valid in view of the prior art.

The course walks the student step-by-step through the data fields of example reference charts and teaches how to complete each field. The course explores the legal basis of the issues that arise under statutory law, federal case law, federal regulations and the MPEP. The course teaches the law behind reference charts so students can better identify and present legal issues to the report requesting lawyer.  The course includes issue checklists, example templates, example comments, the preparation process, practical and theoretical questions, graded assignments, sample test questions, and a final examination,

 

Infringement Analysis Process 300

 

Infringement Search Process 320:

Once the search dates and the meaning of each claim is established from the specification map process (see above), the infringement evidence search begins.  Evidence of commercial activity performing every element of a claim, that does not qualify as prior art, is mostly likely to be evidence of infringement.  There is literally a moment when activity goes from being prior art to proof of infringement.  That is why an understanding of priority law is so important to all of these other courses.  The Infringement Evidence Search Process Course explores various techniques that can be used to find the best infringement evidence.

The search process is recursive in nature.  As infringement evidence is discovered, that evidence is scanned carefully to see which claim elements are not clearly described in the evidence of use.  This information is used to supplement the search strategy.  In practice, this infringement evidence search process is tightly coupled with the following infringement chart process, since evidence is scanned to verify whether all elements of the claim are present in the implementation, and whether more detailed information or reverse engineering needs to be performed to verify the actions of an implementation not described in the evidence.

Infringement Chart Process 340:

The last step that lawyers often take when conducting a patent infringement analysis is to prepare an infringement chart for the target patent. The lawyer uses the infringement chart to determine whether the infringement evidence satisfies legal requirements such as direct infringement, the doctrine of equivalence, inducement to infringe, contributory infringement, product made by patented process, or attempting to avoid infringement by exporting unassembled components.  The course walks the student step-by-step through the data fields of example infringement charts and teaches how to complete each field.  Finally, the course shows how to verify whether the provided evidence proves infringement or invalidity.

Participants read statutory law and federal case law to provide context for the issue checklists for this process.  The course teaches the law behind the infringement chart process so students can better identify and present legal issues to the report requesting lawyer.  The course includes issue checklists, example templates, example comments, the preparation process, practical and theoretical questions, graded assignments, sample test questions, and a final examination.

Process Certification Levels:

All of these courses end with a comprehensive examination that rates students based upon their performance on graded assignments, attendance, and a final examination.  If a student does well, they will receive a certificate from Bell Certified.  The certificate will indicate whether they are certified to perform the process themselves or whether they have have done so well that they are also certified to review the work performed by others.  In either event, they will need to perform a significant number of processes under the direction and control of a lawyer who is experienced in this area of law before any certificate can be considered more than just a theoretical evaluation.

Disclosures:

Those who score well are certified to perform a process and top scores are certified to perform review. A certification does not entitle its recipient to practice law. A certified person must perform these processes under the direction and control of a properly licensed lawyer in order to avoid the unauthorized practice of law. In the end, it is always the lawyer assigning the project who reviews the documents, makes legal observations, and presents the issues to their client. An issued certification does not entitle anyone to work directly with the non-lawyer public.

**Any certification issued to a student, certifies only that (1) the student holding the certificate has successfully completed a course created by me (Dan Bell) and (2) the student scored well enough on a final examination to be deemed “certified by me.”  The certificate does not imply anything else.  I have not sought approval from any private, public, or government entities for the course materials and thus the word “certification” or “certified” only implies my personal approval of an individual student’s performance in one of my courses.  I am a computer science (BS) and law graduate (JD) from Arizona State University (USA), and I have also worked at a well-respected US patent law firm.  If you would like to speak to a US lawyer who has engaged me to teach his team, please let me know.  The past is a good indication of the future.  Although I am maintaining my membership in the Washington State Bar, the Oregon State Bar, and the United States Patent Bar, I will not be acting as your lawyer.

We are teaching scientists and engineers how to work for lawyers. We are not your lawyer, we are not taking new clients, and we are not performing legal services. Since we are not your lawyer, you should not disclose any confidential information to us. We are just teaching now.

If you have come here to learn about patent litigation, patent prosecution, and patent analysis processes, and you agree: (1) to not disclose confidential information to us without your lawyer’s permission, (2) to not perform trained processes directly for the non-lawyer public, and (3) to not disclose our teaching materials to anyone else without our advanced written consent, then you have come to the right place.

Welcome to your future!

Dan Bell,

Chief Learning Officer

(Contact Me)

 

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