CAFC Chronicles: Costly Tales of Claim Construction Fails

05/01/24 • 62 min

Patently Strategic - Patent Strategy for Startups

The difference between getting claim construction right and getting it wrong is the difference between a valid patent and an invalid patent – and the difference between millions of dollars awarded from infringement decisions vs. ending up with a worthless piece of paper.
In this month’s episode, Dr. David Jackrel, President of Jackrel Consulting, leads a discussion into three real-world applications for patent claim construction, as tested and decided upon by the United States Court of Appeals for the Federal Circuit. This is the highest court in the land under the Supreme Court for handling intellectual property disputes – and establishes much of the legal precedent the patent world has to go on ... for better and for worse. The panel dissects the claims for each case, discusses the court’s analysis, and provides tips and strategies for more effective claim drafting in light of the strengths and weaknesses of the litigated patents.
Dave is joined today by our always exceptional group, including:
⦿ Dr. Ashley Sloat, President and Director of Patent Strategy at Aurora
⦿ Kristen Hansen, Patent Strategy Specialist at Aurora
⦿ Ty Davis, Patent Strategy Associate at Aurora
** Mossoff Minute **
In this month's Mossoff Minute, Professor Adam Mossoff discusses the ill-advised price control mania presently sweeping the globe and its predictable impacts on free markets and innovation if we continue down the current path we’re precariously walking.
** Discussed Links **
⦿ Aurora hiring links: https://www.aurorapatents.com/careers.html
⦿ Claim Strategies Episode (Part 1): https://www.aurorapatents.com/blog/patent-claims-the-name-of-the-game
⦿ Claim Construction Episode (Part 2): https://www.aurorapatents.com/blog/claim-construction
⦿ Patent Anatomy Episode: https://www.aurorapatents.com/blog/new-podcast-patent-anatomy
⦿ Patent Anatomy Blog Post: https://www.aurorapatents.com/blog/patent-anatomy-whats-in-a-patent
** Follow Aurora Patents **
⦿ Home: https://www.aurorapatents.com/
⦿ Twitter: https://twitter.com/AuroraPatents
⦿ LinkedIn: https://www.linkedin.com/company/aurora-cg/
⦿ Facebook: https://www.facebook.com/aurorapatents/
⦿ Instagram: https://www.instagram.com/aurorapatents/
⦿ TikTok: https://www.tiktok.com/@aurorapatents
⦿ YouTube: https://www.youtube.com/@aurorapatents/
Thanks for listening!
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Note: The contents of this podcast do not constitute legal advice.

Let us know what you think about this episode!

Let us know what you think about this episode!

Previous Episode

Patents and AI: Current Tools, Future Solutions

We’re talking about AI and its impact on the patent system.
This month's episode evaluates where we presently are and considers where it could all be heading. Dr. David Jackrel and Dr. Ashley Sloat lead a two-part discussion with our all-star panel that begins with a deep dive on the present state of AI patent tools for searching, proofreading, drafting, and prosecution – and then moves on to an exploration of how these tools could eventually provide solutions for many problems plaguing the industry including PTAB invalidation rates, hindsight bias, prior art search quality, and the unsustainable bar. Discussion highlights include:
⦿ ChatGPT 4.0 vs. professionals on core competencies
⦿ Why AI is evolving so rapidly
⦿ AI problems and hallucinations
⦿ AI and public disclosure risk
⦿ AI implications for inventorship
⦿ Current state of AI-assisted patent searching, proofreading, drafting (rule and LLM-based), and prosecution tools
⦿ AI's potential future role in the patent system for fixing issues with the PTAB, search quality, and the unsustainable bar
David and Ashley are also joined today by our always exceptional group of experts including:
⦿ Kristen Hansen, Patent Strategy Specialist at Aurora
⦿ Ty Davis, Patent Strategy Associate at Aurora
⦿ Josh Sloat, Chief Everything Else Officer at Aurora

** Mossoff Minute **
In this month's Mossoff Minute, Professor Adam Mossoff discusses the patentability of AI-generated works and inventions.
** Discussed Links **
⦿ USPTO Inventorship Guidance for AI-Assisted Inventions
** Follow Aurora Patents **
⦿ Home: https://www.aurorapatents.com/
⦿ Twitter: https://twitter.com/AuroraPatents
⦿ LinkedIn: https://www.linkedin.com/company/aurora-cg/
⦿ Facebook: https://www.facebook.com/aurorapatents/
⦿ Instagram: https://www.instagram.com/aurorapatents/
⦿ TikTok: https://www.tiktok.com/@aurorapatents
⦿ YouTube: https://www.youtube.com/@aurorapatents/
Thanks for listening!
---
Note: The contents of this podcast do not constitute legal advice.

Let us know what you think about this episode!

Next Episode

Inventor Stories: Robert Cameron and the Power of Perseverance

We’ve seen few entrepreneurial success stories that haven’t involved heavy doses of perseverance, grit, observation, and creative problem-solving. Today’s guest possesses these qualities in spades. And while I can’t necessarily recommend some of the more death-defying specifics of his approach ... at least not without a lot of “don’t try this at home” fine print :) ... I do think that most inventors and aspiring entrepreneurs will benefit immensely from studying our guest's thoughtfully crafted, time-tested, and wildly inventive approaches to innovation and business.
Robert Cameron is the Owner and CEO of Multi Wedge – as well as the inventor of some brilliant products sold under the same name. Multi Wedge non-marring pry tools are designed to pry delicate materials without damage. These are excellent tools for woodworking, electrical wiring, delicate mechanical work, and so much more. Robert’s wedges were recently tested by SpaceEx and used in the manufacturing process of Jet Engines at G.E Aviation. And of slightly less significance, but much closer to home, found under the Christmas trees of several of my closest relatives this past December. Robert has molded 1.3 million 3-piece sets, 3.3 million single wedges, and has been selling Multi Wedge in over 18,000 stores since 2010.
I met Robert back in October at the US Inventor Conference in DC. I was lucky enough to bump into him over dinner when he shared his incredible story with me. It's one of the funniest and most inspiring success stories you’ll hear.
** Mossoff Minute **
In this month's Mossoff Minute, Professor Adam Mossoff discusses findings from the recently published World IP Day Patent Litigation Study. This study clearly shows problems with the patent system but not the problems you typically hear from the companies that have been dominating the patent policy discussions for the past decade. Adam also highlights the importance of injunctions and damages – something we'll be discussing a lot more in segments to come.
** Discussed Links **
⦿ Multi Wedge: https://multiwedge.com/
** Follow Aurora Patents **
⦿ Home: https://www.aurorapatents.com/
⦿ Twitter: https://twitter.com/AuroraPatents
⦿ LinkedIn: https://www.linkedin.com/company/aurora-cg/
⦿ Facebook: https://www.facebook.com/aurorapatents/
⦿ Instagram: https://www.instagram.com/aurorapatents/
⦿ TikTok: https://www.tiktok.com/@aurorapatents
⦿ YouTube: https://www.youtube.com/@aurorapatents/
Thanks for listening!
---
Note: The contents of this podcast do not constitute legal advice.

Let us know what you think about this episode!

Patently Strategic - Patent Strategy for Startups - CAFC Chronicles: Costly Tales of Claim Construction Fails

Transcript

[00:00:00] Josh: G'day and welcome to the Patently Strategic Podcast, where we discuss all things at the intersection of business, technology, and patents. This podcast is a monthly discussion amongst experts in the field of patenting. It is for inventors, founders, and IP professionals alike, established or aspiring. And in today's episode, We're talking about Costly Tales of Claim Construction Fails.

This is the final episode in a three part series focused on the funda