解釋 key claim term 的嚴謹性 (p.

436):

Don’t: 只有⼀一個example會discount
the claim for possible invalidity or
narrow scope

Do: use several examples plus an

explicit definition
Claim mix (請求項類型的多樣性)

1. 硬體+軟體 (p. 449):

2. 獨立項 (good breadth to create good coverage) +附屬項 (good claim diversity protects agains the risk and
depth to protect against charges of invalidity) impact of claims being invalidated at trial (US
5,606,609)(p.371).
3. structure + method all possible aspects, including components,
apparatuses, systems, and methods, are
4. hardware device, hardware method, software device, and
covered, providing maximal scope to the claims.
software method 四種 (p.145): $500 million to patent owner TiVo.
This is an excellent patent to teach how a court, or any evaluator, (p.149)
looks at patent claims. In particular, a key part of the value has to do The breadth of claim coverage, the key is not
with the entire suite of independent claims, and not just one “claims” in general, but rather “independent
independent claim.
claims” and, particularly, “independent claims
5. Client-side versus server-side claims (p.148): focused on the Point of Novelty”.
consumer0oriented v. supplier-side
manufacturer v. distributor
-- try to consider all sides, whether you are writing or evaluating a
patent.
Claim Parallelism: 單⼀一新穎點以multiple
types of claims來來保護

註：terminology 要⼀一致，否則易易導致
parallelism lost, and maximal protection is
not obtained.
p.127 - metacode例例⼦子

避免Non-standard Usage (p.487):
KEY CLAIM TERM 當key claim term的選⽤用字詞在industry內是有⼀一般約定俗成的
⽤用法，但在該patent中卻使⽤用不同的⽤用法，confusion is
certain to result (除非明確定義). 因此，若若要使⽤用特殊⽤用法，
盡可能定義不具有standard Use的字詞。
Doctrine of claim differentiation (p.230):
If you are writing a patent, explain key terms by
definitions, examples, or figures, and do not rely on
the doctrine of claim differentiation.
解決term 的ambiguity (書中舉例例:”receiver means”)的⽅方法 (p.235):
How could at the patentee have created even more value by removing doubt from the mind of any possible buyer or licensee about the scope of the patent claims ?
1. If you use an industry-standard term in a standard way, One way would have been for the patentee to sue a term other than the industry term “metacode”.
fine. What if, instead of “metacode”, use non-standard phrase like “data controllers” or “control interpreters” .
2. If you wish to use the term in a non-standard way, then Non-standard use 會影響專利利的價值 pp.128 129:
present in the patent an explicit and clear definition of the
non-standard usage. There is a great danger in using a technical term having a Remember always that a patent is both a description and a
standard industry definition, when the patent means communication tool. Similarly, patent value is based both on
3. Better yet, invent your own term, define it, and use the
something different from the standard definition. the content in the patent and by what you communicate to
invented term, rather than using the industry-standard term in
a non-standard way. This kind of non-standard usage confuses the PTO, courts, potential buyers, licensees, courts, and other interpreters of the
(p.495) juries, and patent evaluators. patent. If you fail to communicate what you mean, you cannot
If people reading your patent cannot understand easily the maximize the value of your patent.
scope of protection, the patent cannot be as good as it
should have been.
對於專利利權⼈人或申請⼈人在專利利或申請案中所主張的請求項，
在請求項不只⼀一個的情況下，是不會發⽣生有相同權利利範圍的
請求項的狀狀況。
Dependent claims and claim differentiation broaden the scope of
the independent claims (p.371)
Ex. “selected information”, was not clearly defined, and might be
taken to mean the rather narrow, “security information”.
Through DCD, dependent claims may broaden the independent
claims. (但撰寫階段不要依賴DCD)

1. Use “receiver” rather than “receiver means” in the claim (命名盡量量避免有

means-plus-function名稱)

2. Add a clarifying definition in the Summary or in the Detailed Description, such

as “the term ‘receiver means’ shall include a receiver or other combination of
hardware and software components sufficient to receive either optical or
electronic information signals” (在說明書內定義清楚)

3. Add examples of “receiver means” in the written description. (增加該term的

實施例例、例例⼦子)

4. Add a new element, numbered and with the name “receiver”. to Figures.
Discuss this new element in the written description. (圖中畫入該term對應的元
件或模組，並於說明書說明)

代表性例例⼦子 “different”這種常⾒見見的non-technical word，反倒常常變成key The absence of definitions of key claim

claim term (US 6,714,983) (Broadcom Corp v. Qualcomm, Inc.) (p. 160): terms is a relatively common defect in
patents, even in other wise “good patent”(p.
“communication circuitry...being adapted to use a first wireless 173)
communication and a second wireless communication different from the 作者本⼈人介紹本案 (影片)：
first wireless communication to transmit data to access points” http://truepatentvalue.com/video-a-case-study-from-true-patent-value/
Evaluators reviewing a patent for
possible commerce will often look at the
Background, so a clear statement here
can help communicate your invention to
interested parties, and in that way
increase patent value.

People will not pay money to buy or

license-in patents they do not
understand. (p.12)
Claim裡的 連接詞 除
了了，“comprising”外，幾乎都不要⽤用，
作者Goldstein ⾃自⼰己在review patent
時，for any claim, any transition other
than “comprising”, I discount the
quality of that claim. (p.23)
最常⽤用的是 2分鐘
review，特別是large
portfolio must be
reviewed quickly.

Inherent tension between claim scope and claim validity

If a claim overlaps prior art, even by a small amount, then properly

the claim should not be allowedly a patent examiner -- if such a
claim were allowed in error, the claim will be subject to cancellation
in future proceedings in court, at the ITC, or at the PTO.
lack of antecedent basics is not a reason to invalidate a claim, if
there is no confusion as to what the claim means. (p.395)
在⽤用”said”時，要⼩小⼼心後⾯面接的元件名稱或代表的涵意有沒有shifting
terminology，要不然當同⼀一件事情有兩兩個名稱，或兩兩件事情有同⼀一名稱，
就會很⿇麻煩。
US. 5490216 中：
Validity (1) key term “local licensee unique ID generator” 出現在Fig. 8，亦在
patent中有討論，但圖式中並未標號。
(2) terms “software”, “platform”, and “use mode” were explicitly
defined in a section entitled “Definitions”，然⽽而，卻是放在”Description
Formal defects in a patent are potentially bad, but may not matter if of the Prior Art.”。One should avoid confusion between what is prior art
everyone knows what you mean. (p.115) and what is part of your invention.
(3) 圖式說明有六個embodiments，Detailed description of the Preferred
Emobdiment 中有1st, 2nd, 3rd, 5th, 6th, 7th ，漏掉了了4th，且導致標號錯
誤。

-- 仍然有 $388 million的損害賠償⾦金金

關於preamble書寫內容的重要知識點(p.126)：

When limitations are placed in a preamble, a court may find them to be part
of the claim or may find them to be general descriptions which are not part
of the claim.

Don’t put limitations in the preamble, but only in the body of the claim to
be certain that a limitation will be applied by both the PTO and the cours.
to use one specific protocol in the claims is potentially extremely limiting.

By contrast, to use a protocol in the written description merely as one example is

acceptable.

Expert Fundamental Analysis (EFA)
A measure based on a review by a
person knowledgeable in the
technology and in the review of
patents.
較推薦：Add a broad and generic definition, plus several examples, all in the written
description. (p.195)
(p.96, p.102)
1. A short and simple preamble is good.
Even long claims, with many elements,
2. In a structure claim, a smaller number of structural elements is good.
may be valuable, if the elements are
3. General structural elements are good. (not short in number of words, but each
general. here (U.S. 6,233,389), the
elements was simple and general)
elements were general, and they did
4. A large number of sub-elements will not unduly narrow the main element as long
capture the infringing DVRs. (p.145)
as the sub-elements describe aspects or functions that you would expect to see in
any product of the type described in the element.
A non-traditional or non-standard word (ex. incorporating) might not matter; as long
Scope as everyone knows what you mean (p.114)
If you think that a certain element is a point of Novelty (PON), put any other innovation
Human evaluator may perform various types of analysis. (p.45) into an entirely separate claim. That gives you the best possible scope for your claims.
Identify the one and only one PON in each independent claim (p.301)
這四種都是基於三個基本criteria of patent value
Ex.
- Small innovations are important, particularly if they are deemed essential to a technical
(1) 2分鐘 review focused on Abstract, Summary, and Independent Claims;
standard. (p.303)
(2) 15分鐘 reasonable review including additional aspects of the patent and
1. Validity
key points in the prosecution history;
2. Scope If you can cover, in one patent or in a group of related patents, multiple approaches to the
(3) 約1⼩小時 lengthy review where all aspects of the patent and history are
reviewed 3. Discoverability same problem, this diversity strengthens your claims and the value of your intellectual
(4) 幾天及數萬美元 a litigation-ready review in anticipation of licensing, property.
litigation, or sale, which may. A private package is possible with a strong portfolio. (p.304)
a strong portfolio of patents focused on a specific technology -- including a significant
number of patents with incremental innovation and at least a few patents with high value.

These incremental innovations would add value to such a portfolio and would receive
additional value from being part of a portfolio.
本書原本架構：
以下列列分類分述何謂好的專利利： Micro Mesa 指定書籍：TRUE PATENT VALUE - Defining 無法被發現的侵權，the
-- 專利利估值 claim is economically
-- 法院
Quality in Patents and Patent Portfolios (Larry M. useless
-- ITC禁制 Goldstein) 4.
-- 買賣
-- 標準必要專利利(池) -實⽤用知識點彙整及觀念念釐清 若若X公司的專利利時常被
-- 基礎專利利 FUNDAMENTAL ANALYSIS
Y公司的後申請專利利所
four main ways to discover infringement of patent claims: 引⽤用(strong forward
本整理理：統整成review或寫專利利時容易易check跟理理
解的版本
（省略略初學專利利從業⼈人員亦非常明瞭的知識點） review of claims and written
citations)，那隱含著
description of the invention,
according to some judgement 1. Review of literature describing the product or process. 有很⼤大可能Y公司的產
criteria and some way of 2. Visual Inspection. 品侵權X公司的專利利。
scoring the criteria 3. Reverse Engineering.
4. Strong Forward Citations by a Single company. Heavy forward citations by one
company suggests possible
interest in buying a patent
portfolio (p.256)
特例例：Preamble 有時還救了了專利利抓侵權的能⼒力力(pp. 104, 105, 111,
112)

Uniloc v. Microsoft Corp. (2011)

Discoverability
Claim 19 似乎包含了了”local” elements at the customer site
that Microsoft did not directly control. 但是，CAFC認為：
specifically because the preamble of claim #19 used the
phrase “remote registration station”, which, the court said,
proved that all of the elements will be at a remote site
controlled by Microsoft -- meaning that the claim did not
have any local elements, despite apparent claim language to
the contrary.
-- It is relatively rare for a preamble to save a patent claim.
說明書裡寫的”ability” means “option”, but doe not mean requirement (p.124)
(p.143)
In many cases, infringement of hardware claims is harder to show but, once shown, may
resist a defendant’s efforts to avoid an injunction by design around.
Scope of patent coverage is determined
both by the original liability of infringers
By contrast, infringement of software claims might be easier in some cases, but a
and by the patent’s ability to defeat
defendant might be able to design around the infringement with software redesigns that
attempts at design around.
do not involve costly manufacturing.

i.e. 硬體不好抓侵權但抓到很難design around；軟體好抓侵權但容易易design around

做個表格來來判斷Claims 是否 good (p.108-110):

(1) identify the key claim terms.

(2) write what you understand the term to be.
(3) note what your understanding may mean for scope of coverage.
a. who is infringing ? (Technical question)

b. which products or processes are infringing ? (Technical question)

c. How many components, products, processes, or other units are

infringing ? (Marketing and financial question)

d. How much are sales of the infringement ? (Marketing and financial

question)

Proxy Fundamental analysis (PFA)

automated measures of quality

FINANCIAL ANALYSIS

Can you make money on this patent?

Income/Cost/Market Method (p.74)
How much would it cost to unlock the monetary 本書較少financial analysis
value in this patent ?

What is the best way to make the money --

licensing, litigation, other ?
Claim diversity 不錯的 patent (US 5,7774,670) (p. 246):

claim 1: a method claim

claim 9: a computer-readable medium on a client
claim 10: a computer readable medium on a server
claim 11: a network of computer systems
claim 14: a computer system
Structuaral tags can protect structure claims from being The structural tag does not limit the element to the
invalidated specific method, but simply says the structure can
perform that method. A structural tag can enhance
ex. structure “configured to operate the method”, “be adapted greatly the value of a claim, hence also the value of
for”, “be capable of” ... the patent. (p.165)
Seminal Patent
very large numbers of forward citations.
(1) early priority date for the technology;
(2) many forward citations;
(3) important technology;
(4) significant market.
There are some defects in patents, even major
defects, which simply make no difference to the
value of the patent. (p.349)

Ex. US 5,606,668 中討論Fig. 3，但卻沒有討論真正的圖

Figs. 3A-3D。However, this defect makes no
difference to the value of the patent, because the
claims were not based on Figs. 3, 3A-3D.
ITC考慮禁制令的因素 (p.154)

1. economic prong: the subject of the case is part of a U.S. domestic industry.
2. technical prong: the plaintiff is practicing the patent in some way.
3. possible effects on competition, and on consumers.
Three factors determine claim value (p.179)

(1) the market size of the main subject;

(2) the importance of the technical issue or problem discussed by the patent;
(3) the simplicity and clarity of the solution presented in the claims.
原因：
趣味：專利利的測不準原理理 (p.212) (雖然這比喻我看起來來是硬湊的)：
1. interweaving of law and technology, not found in any other legal field.

In physics, the Heisenberg Uncertainty Principle says that we can never know both the
2. include so many different players.
position and momentum of a particle at the same time. Goldstein propose an uncertainty
principle of patent value, as follows:
3. The validity of claims, and claim scope, are always subject to change:
3-1 litigation is a war
No matter how good your claims look, or how many times you have won in litigation,
3-2 patent commerce, patent rights may always be changed, good
something can always happen that will impact the entire patent and might even leave you
(through positive rulings), or bad (through invalidations or reduced claim
with nothing.
scope)
equitable defenses (衡平法上的答辯) (p.92): reasons the patent, even if valid and infringed
by the defendant, should not be enforced.

(1) fraud against the PTO -- particularly where the applicant is accused of deliberately
concealing an important piece of information from the patent office
(2) patent misuse -- often where the patentee tries to collect royalties after the patent has
expired, or where the applicant uses the patent to violate the antitrust laws
(3) the doctrine of “laches” -- where the patent owner delayed suing and the delay
caused damages to the defendant
(4) the doctrine of “equitable estoppel” -- where the patent owner led the defendant to
believe that no lawsuit would be filed, and the defendant relied on this belief
第３點成立的原因：
(1) costs of litigation are shared, giving the owners as plaintiff a cost advantage.

(2) The defendant is faced with many patents, all of which have been found by technical experts to
be essential to a standard. The likelihood of finding infringement of at least some of the patents
某些專利利權⼈人選擇將他們的專利利放入專利利池 (patent pool) 中的原因 (p.262)： is therefore high.

1. owners may maximize patent value with a licensing and litigation campaign involving all the (3) Because so many patents are directed at the defendant, there is almost no incentive for the
patents in the group. defendant to try to invalidate one or two of the patents.

2. The strength of the patent aggregation is that it will cover many different aspects of the (4) The relatively modest joint licensing rate typically offered by the administrator often makes it
technology. worthwhile for a licensee to take the license rather than fight the lawsuit.

3. threat of litigation against potential licensees is magnified by the aggregation of patents.
適合放入patent pool的專利利類型(p.287)：
Ex. US 6,430,398: Power control in a mobile system
-- The scope of the patent is not particularly broad, but what gives this patent value is that it has
been judged essential to the W-CDMA standard by being part of the W-CDMA pool. While this
particular patent is relatively narrow in scope, and there are likely other patents of greater concern
to the infringer.