Strategies for Patenting Softwarebased Inventions in the U.S.

Strategies for Patenting Softwarebased Inventions in the U.S. Presented by: Tonya Drake ~ Fish & Richardson P.C. (617) 956-5986 drake@fr.com

Six Practical Tips to Effective Software Patents 1. Include thoughtful and relevant figures 2. Draft means-plus-function claims wisely 3. Include system claims 4. Draft claims from varying viewpoints 5. Consider 101 when drafting method claims 6. File an information disclosure statement 2

Include thoughtful and relevant figures Figures provide the backbone of a patent application. A complete set of figures can be beneficial both in prosecution and litigation. Software is often complex and hard for the PTO and juries to understand. Good figures can convey a compelling story to an examiner and jury. However, software patents often include only flow charts. Do - spend time generating a well-planned set of figures. Don t rely only on flow charts. 4

Include thoughtful and relevant figures Use visual concepts of the big picture to: Provide an introduction to the main concepts. Speak to the examiner and jury. Help the expert testify. 5

Include thoughtful and relevant figures Use system figures to: Support system claims. Let jury see something tangible. Help to clarify the different players. 6

Include thoughtful and relevant figures Use Flow Charts to: Provide details of the software s functionality. 7

Include thoughtful and relevant figures Use Swim Lane Diagram to: Help the application drafter keep the parties straight. Provide another angle for looking at the flow chart. 8

Include thoughtful and relevant figures Use Screen Shots to: Help the jury and examiner put a face on the invention. Disclose things that you were not even aware of. 9

Draft means-plus-function claims wisely U.S. patent law provides for pure functional limitations. Benefit Often more difficult for accused infringer to obtain summary judgment. Downside More uncertainty. Do - Use means for limitations sparingly. Don t - Make each limitation of a claim a means for limitation. 11

Draft means-plus-function claims wisely Example of poor use of mean-plus-function Example of good use of mean-plus-function 12

Draft means-plus-function claims wisely Means-plus-function claims require appropriate disclosure of structure in the specification. Structure = algorithms that corresponded to the functions. WMS Gaming v. Int l Game Tech. Structure = more than a general purpose computer. Blackboard v. Desire2Learn (Fed. Cir. 2009) 13

Draft means-plus-function claims wisely Do - Ensure proper 112 support for all means-plusfunction limitations. Include more than a black box system diagram. Include a flow chart and/or description of the algorithm that is used to perform the function. 14

Draft means-plus-function claims wisely Example: 15

Include system claims Problem: It is very easy to move software around (e.g., to foreign countries), and to split it up onto multiple computers. NTP v. RIM: System claims can be infringed if part of the system is ex-u.s., but method claims are only infringed if the whole method is performed inside the U.S. A patent with only method claims can be circumvented by performing a portion of the method outside the U.S. 17

Include system claims Do - Include real system claims. Real system claims can provide varying claim coverage from the method claims. Such claims can include limitations related to hardware capable of performing a particular function. Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197, 1204 (Fed. Cir. 2010) Don t Rely only on Beauregard claims and revised versions of method claims. 18

Draft Claims from varying viewpoints Software and business method inventions often have multiple players. Do - Consider the infringer when drafting claims. Do - Ensure that all claim limitations are performed by a single entity. Don t - Have the user as a necessary party for infringement. 20

Draft Claims from varying viewpoints Do - Draft separate claims from the perspective of multiple different players. 21

jad10 Draft Claims from varying viewpoints Don t Require multiple players in a single system claim. Example claim requiring multiple players User computer Networking server Other user Other user A system, comprising: a user computer configured to send requests from a first user to establish electronic relationships with a plurality of other users; a networking server configured to: process the requests; receive communications posted by the first user, and send communications from other users to the user computer based on relationships between the first user and the plurality of other users. 22

Draft Claims from varying viewpoints Do - Try to draft separate client-side claims and serverside claims. Don t Mix both client-side and server-side limitations in a single claim. 23

Draft Claims from varying viewpoints Client Side A method, comprising: receiving, from a first user, requests to establish electronic relationships with a plurality of other users; providing data corresponding to the requests to a server system; and receiving from the server system communications posted by the one or more other users, wherein the communications have been selected by the server system to be delivered only to users who have relationships with the other users. Server Side A method, comprising: receiving, from a computing device, requests to establish electronic relationships with a plurality of other users; receiving communications from a plurality of other users; determining whether the first user has a defined relationship with the other users; and providing the communications based on a determination that the first user has a defined relationship with the other users. User computer Networking server Other user Other user 24

Consider 101 when drafting method claims 35 U.S.C. 101 is an continuously moving target. Do - Ensure the specification is drafted to allow future claim amendments based on changes in the case law. 26

Consider 101 when drafting method claims July 2010 USPTO issued guidelines for subject matter eligibility of process claims in view of Bilski. Factors weighing toward eligibility: Recitation of machine or transformation. The claim is directed toward applying a law of nature. The claim is more than a mere statement of a concept. 27

Consider 101 when drafting method claims Examples of the USPTO s application of the guidelines 28

Consider 101 when drafting method claims Tips for drafting claims to satisfy 101 Do - Add computer-implemented to the preamble. Do - Add using/by/on a processor, on/with/in a memory, and other machine limitations in the body of the claim. DON T - Simply add by a computer to each limitation, made a determination of the features in which the recitation of the computer or processor is most appropriate. 29

File an information disclosure statement Think about the Trial Truth. Strengthen the patent for litigation by ensuring relevant prior art is considered by the examiner. Do remind and educate inventors about their duty to disclose. Don t Delay collection of relevant documents from the inventors. Collect documents at the time the patent is drafted. 31

Summary of Recommendations 1. Include thoughtful and relevant figures 2. Draft means-plus-function claims wisely 3. Include system claims 4. Draft claims from varying viewpoints 5. Consider 101 when drafting method claims 6. File an information disclosure statement 32

Thank You Tonya Drake Associate Fish & Richardson P.C.