Law360, New York (March 07, 2014, 8:38 PM ET) —
The role of a patent prosecutor involves more than just obtaining a patent. The role also includes ensuring that the patent is enforceable. A patent has little value if it does not provide at least a threat of enforcement. The changing patent enforcement landscape makes obtaining a patent with a high enforcement value more difficult. And, since litigating a patent typically occurs years after a patent’s issuance, prosecuting with an eye to enforcement should keep evolving legal trends in mind. A single legislative change or court decision can alter a patent’s value.
This article reviews some recent U.S. International Trade Commission decisions that exemplify how changes in the enforceability of certain types of claims can change prosecution claim strategy.
Write Claims That Cover the Competition And Your Client’s Products
Prosecuting an enforceable patent cannot occur in a vacuum. While the claims should read on the competition, the relationship between the claims and the client’s products (or a licensee’s products) also is important when litigating in the ITC.
Prosecute To Establish Domestic Industry
The ITC can be a powerful enforcement venue for patent holders seeking to enjoin the importation of infringing goods. To obtain such an exclusion in the ITC, however, patentees must establish infringement, importation and the existence of a domestic industry relating to the patent.
The Federal Circuit decision in Microsoft Corp. v. ITC serves first as a reminder to prosecuting attorneys to cover their client’s products with patent claims in order to establish domestic industry. The decision focused on another class of products a prosecutor should consider: the finished products of third-party manufacturers/licensees that incorporate their client’s patented technology.
 Suprema, Inc. v. ITC, Nos. 12-1170 (Fed. Circ. Dec. 13, 2013) (“our conclusion that an exclusion order based on a violation of 19 U.S.C. § 1337(a)(1)(B)(i) may not be predicated on a theory of induced infringement under 35 U.S.C. § 271(b) where direct infringement does not occur until after importation.”).
To establish a domestic industry in Microsoft Corp. v. ITC, Microsoft relied on source code for Windows Mobile that it provided to third-party manufacturers for incorporation into mobile devices. However, Microsoft failed to show that the source code provided to these third-party manufacturers was actually implemented into the mobile devices. Thus, to later take advantage of the ITC’s injunctive power, companies should seek patents covering its products, its competitors’ products, and versions of its technology implemented in products of its third-party licensees, if the company intends to rely on patented technology in the third party’s product.
The Microsoft ITC case also reminds patent prosecutors to immerse themselves in their client’s technology during patent prosecution. Conducting regular status meetings with engineers and design teams regarding current commercial embodiments, contemplated patches/tweaks, and next-generation designs can provide information to help acquire more valuable and enforceable claims.
Meetings with other business units, or even third parties when technology is licensed, may be necessary to ensure that claims are drafted to cover the licensed technology in the form actually implemented. Similarly, to the extent possible, prosecutors should monitor competitor activities in the same markets to help draft claims infringed by their competitors.
However, other claims protecting only the client’s commercial embodiments or only competitor’s products still bring significant value. They often deter market entry, disrupt competitor financing, or cause competitors to incur costs in design-arounds and/or patent evaluations.
Pursue Alternative Claim Scope
Patent prosecutors should advise clients to pursue claims of differing scope. For example, obtaining patents with both method and apparatus claims, and a variety of each such type, may better position their clients in the marketplace.
Method Claims Fall Short in the ITC
In In re Certain Electronics Devices, the commission held that Section 337 is not violated solely by an end user’s direct infringement of a method claim, as the act of importation does not practice the steps of a method claim. The infringement must be based on the product as imported. This decision left many practitioners to believe that induced and contributory infringement were the only options for asserting method claims at the ITC.
The recent Federal Circuit decision Suprema Inc. v. ITC further calls into question the value of method claims at the ITC. In Suprema, the Federal Circuit found that if direct infringement occurred after importation, the ITC could not issue an injunction based on induced infringement. As Suprema and In re Certain Electronics Devices limit the application of direct and induced infringement theories of method claims at the ITC, contributory infringement may be the only available option for enforcing method claims at the ITC.
Given these limitations, patent prosecutors should advise clients to pursue apparatus claims when possible. However, apparatus claims should not be pursued exclusively. Certain method claims can capture broad concepts difficult to capture in apparatus claims, and be enforced in federal district courts.
Matching Claiming Strategy with Enforcement Goals
Although these cases emanate from the ITC, it’s just as likely that the federal district courts and the Court of Appeals for the Federal Circuit clarify or change the law in a manner that affects prosecution claim strategy. These cases highlight why patent prosecutors should focus on changes in patent enforcement law.
If the potential enforcement venue is unknown during prosecution (which is typically the case), the patent prosecutor should pursue a range of claims that can be enforced in any venue. If a client makes or designs its products in the U.S., while its competitors’ products are imported into the U.S., the ITC may be a valuable enforcement venue and the patent prosecutor should advise the pursuit of at least some apparatus claims. In other scenarios, such as, e.g., where a competitor is a U.S. manufacturer, method claims may be just as valuable as apparatus claims, if not more so.
Keep Important Disclosures Alive
Maintaining pendency of valuable patent applications is one of the most effective strategies for a company to ensure patent families maintain enforcement value in case of changes in the technology or in the law. For example, changes in the law may bring into doubt the validity of some patents. A related pending application provides an option for patentees to respond to changes in the law.
Keeping disclosures alive also protects patentees against the increasing likelihood of post-grant challenges to granted patents, and provides a tool to fix, for example, improper inventorship or priority, among other issues. A pending continuation also may increase, or at least maintain, the value that the marketplace gives to a patent portfolio in a potential sale or licensing transaction.
Continuation decisions for important applications, however, may come sooner than in the past. For example, as more companies pursue important inventions via the U.S. Patent and Trademark Office’s Track One Prioritized Examination program, companies often will need to make continuation decisions within one year of filing the original application, as opposed to several years for applications undergoing regular examination. While there is the potential for overall cost savings for a given patent application (from fewer rounds of prosecution), expedited prosecution shifts costs ahead. These costs may include the cost of filing continuation applications.
Patent prosecutors can draft patent applications and respond to office actions in many different ways. A given claim type may be attractive to a client for certain business reasons, such as attracting investment, or a given claim amendment may be sufficient to overcome an examiner’s rejection. But, by ignoring or failing to anticipate trends in patent enforcement law, patent prosecutors may squander opportunities to add more value to their client’s businesses. Investing time and exploring enforcement law during prosecution can pay big dividends in future litigations.
The opinions expressed are those of the author(s) and do not necessarily reflect the views of the firm, its clients, or Portfolio Media Inc., or any of its or their respective affiliates. This article is for general information purposes and is not intended to be and should not be taken as legal advice.
 19 U.S.C. §1337 (2012).
 Microsoft Corp. v. ITC, 731 F.3d 1354 (Fed. Cir. 2014).
 Id. at 1358.
 Id. at 1361.
 Certain Elec. Devices with Image Processing Sys., Inv. No. 337-TA-724, Dec. 21, 2011 Commission Opinion.
 Id. at 13-14, 17.
 Id. at 13-14.