Patently Strategic Podcast: Claim Strategies

Claims are the fundamental building blocks of a patent. There simply is not a more important concept to grasp in all of patent strategy. As former Chief Justice of the Federal Circuit, Giles Rich, once famously said, “The name of the game is the claim.” And in terms of what game you’re playing, the claims are where you separate the patents playing checkers from the patents playing chess.

Claim strategies are where patent practitioners earn their money and also where the costliest mistakes can be born. As David Cohen, a Patently Strategic regular, has said in the past, “Ninety percent of the mental exercise in drafting patents is in the strategy of looking around corners, anticipating the future, and trying to capture as many would-be infringers as possible.” How your claims are crafted is literally the difference between a patent being an intellectual asset and a worthless stack of paper.

Episode Overview

In this month’s episode, Ty Davis leads a discussion, along with our all-star patent panel, delving deeply into claim fundamentals, claim drafting strategies, how to think about claims in the context of infringement, and in the game of patenting, how to move like a queen, so you’re not treated like a pawn. Ty and the panel discuss:

What claims are and what can be claimed
Types of claims including method of treatment, dependent, and independent
Claim strategies and tips for capturing future infringers
Divided infringement and coverage of two illustrative cases: Tropp v. Travel Sentry, Inc. and Syngenta Crop Prot., LLC v. Willowood, LLC.

This introductory episode will serve as part one in a three-part series on claims. The upcoming episodes will focus more on claims construction and then on the interplay between claim construction and the criteria of the disclosure benchmark of a person having ordinary skill in the art (PHOSITA).

Learning the Game

If the name of the game is the claim… What is a claim? Claims are often referred to as the metes and bounds of a patent. Said another way, claims define the subject matter that is protected by the patent or sought to be protected by the patent application. Once allowed, a patent is treated like property. As such, the claims define what the patent owner receives a limited monopoly (different game, same goal) upon in return for the knowledge that is dedicated to the public from the patent’s disclosure. Imagine for a moment, someone attempting to prevent trespassing or value the price of a piece of land without knowing where it is or how big it is. The same conundrum would be experienced with a claimless patent.

Claims can be made on a machine, process, article of manufacture, composition of matter, or any new and useful improvement thereof.

How to Play

Claims in a patent need to be clear, supported by the disclosure, and complete enough to cover the invention adequately. Zoom out and capture the big idea with the least amount of steps/elements possible in an independent claim. Then you can narrow in on specifics, and alternatives with dependent claims. Dependent claims may be used to cover alternatives, incorporate added capabilities, and provide breadth for the claim set.

Choose Strategy OR Experience Tragedy

When contemplating a claim strategy, it may be beneficial to at least answer some of the following:

What is the invention?
What is the prior art?
What is the company? Are you selling a product? Are you selling a service? Both? Are you attempting to directly monetize the intellectual property?
Who would be the competitors?
Who would be the infringers?

Capturing the Rook

Contemplating infringers and infringement is such an important part of the process that an entire episode could be dedicated to the intricacies and subtle details of what constitutes infringement, but for this episode, we focus on the following:

Who might the infringer be? Understanding who the target infringer would be is crucial. For example, we’re probably less interested in capturing Joe Carpenter as the infringer for using a purchased hammer; instead, we want to protect against the scenarios where hammer manufacturing and retailing entities would be the infringers.
Where might the infringer be? Let’s say, for example, we are a U.S.-based company competing with another U.S.-based company with their manufacturing based in China. In this example, infringement is likely to be based on the point of importation. It may be advantageous to develop a claim strategy targeting the state of the product or products at the point of importation.
Can the infringement be identified or even spotted? For example, if we pursued patent protection on a manufacturing process that is not evident by looking at the final product, this patent would be nearly impossible to rationally enforce.
How do we ensure that infringement is done by one entity? How do we ensure that we are playing the game one-on-one? In the world of infringement, capturing more than one infringing entity with a claim will almost certainly result in defeat. Therefore, we must ensure that the limitations of the drafted claim can be read upon, or upon the actions of, one entity.

A Divided Board

Tropp v. Travel Sentry, Inc. exemplifies the risk of capturing more than one entity as infringers of a claim. Tropp’s claim was to a method of improving airline luggage inspection by a luggage screening entity (i.e., with what we now know as TSA-approved locks). Essentially, the method included: (1) providing a luggage lock with an identifier that can be unlocked by a master key, (2) marketing the lock to emphasize that it is subject to a special screening procedure, (3) the identifier signaling to a luggage screener that the lock can be opened with the master key, and (4) the luggage screener using the master key to open the luggage. The first three steps of the method could be read directly upon Travel Sentry BUT it was checkmate for Tropp when it was found that the fourth limitation read upon the luggage screener (i.e., TSA) and not Travel Sentry.

Discussion Panel

Ty is joined by our always exceptional group of IP experts, including:

Ashley Sloat, President and Director of Patent Strategy at Aurora
Kristen Hansen, Patent Strategist at Aurora
David Jackrel, President of Jackrel Consulting
Marie Smyth, Patent Agent formerly with Greenberg Traurig and Meta
Porter Thames, J.D. and Patent Agent at SMU Science and Technology Law Review

Mossoff Minute: Advancing America’s Interests Act

This month’s Mossoff Minute, featuring Professor Adam Mossoff, looks at the poorly named Advancing America’s Interests Act and its potential impact on the International Trade commission (ITC) being able to block import of products that infringe on American patents. We’re also publishing excerpts as short-form videos on Instagram Reels, YouTube Shorts, and TikTok.