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Understanding claims using claim segments

We received a question about why we chose a framework that analyzes claims using claim segments or "concepts" instead of focusing on an entire claim limitation.  On our site, we explain the idea behind claim concepts and the benefits of this approach.  Although the "claim concept" approach can be used to discretely parse claim limitations for invalidity analysis, there are other benefits. First, in a number of litigations, claim terms, not claim limitations, are normally in dispute.  Plaintiffs often read claims broadly for infringement, whereas defendants tend to read claims narrowly for non-infringement.  If the prior art analysis were done on a limitation by limitation basis, it would be more difficult to precisely account for such disputes during the prior art analysis.  It would also be more difficult to alter the initial analysis later.  In certain circumstances, you may need to alter your invalidity charts and contentions to account for the Court's claim constructions.  Our goal has always been to analyze each reference thoroughly, and only once.  The analysis for each reference can be revisited and updated using our platform, but the bulk of the analysis should be completed during the first pass.  With PatDek, you're not changing the analysis by editing charts, instead you're changing the analysis for concepts as appropriate for each reference.

So how does the concept approach really help?  As an example, consider the following portion of a claim limitation:  activate a mobile device using an authorization code.  Assume that there is a dispute about the term "activate."  One side argues that "activate" means that the device is authorized for additional use beyond its standard use, while the other side posits that the term means that the device, previously not authorized for any use, is now authorized for some use.   Using the concepts approach, we would consider the entire claim limitation embodying at least three concepts:  (1) activate; (2) mobile device; and (3) authorization code.  If we wanted to accommodate the claim limitation dispute in our analysis, we could use alternate concepts for the term "activate" to capture the claim construction issues:  (1a) activate from non-use state; and (1b) activate for further use.  The entire claim limitation would then embody four analysis concepts:  (1) activate from non-use state; (2) activate for further use; (3) mobile device; and (4) authorization code.  Our invalidity analysis for each reference would consider both forms of the term "activate."   Charts and contentions using those concepts could also address each form of activate, and, following a claim construction ruling, charts and contentions could be populated with disclosures from references under the prevailing construction of activate.

If the analysis was done on a claim limitation basis, a reference may address the non-use state of activate, but not include a disclosure of an authorization code.  Other references might disclose both activating for further use with an authorization code. If the analysis only considered the entire claim limitation, how could the system identify the appropriate 103 combinations and how could someone review which references are relevant following claim construction?  Perhaps you would have to re-review all teachings of the claim limitation in question and parse out the relevant teachings post-claim construction.  This would require another review of the references.  This would also be time consuming if there were 50+ references.  Using our concept-level system, a link to the prevailing concept and the claims in question would only need to be changed - the system would then extract the appropriate analysis for charts and 103 contentions using the new linked concept.  No further analysis would be required.

As a further example, the concept approach allows prior art analysts to look at the concepts only, independent of the claim language.  The analysts/reviewers do not need to be fully versed in the claims.  Carefully chosen concepts reaching the breadth of the claim limitations would provide the necessary targets for the prior art review.  The review can even be handled by a separate team of reviewers that take a first-cut to enter information into the system for 30-50 references.  A supervising attorney can then review and approve first-cut analysis on a reference by reference basis.  It would be more difficult to have a separate team of reviewers for a project when the analysis were performed on a claim limitation by claim limitation basis.

For each of these reasons, we believe the concept approach is easier to understand for the reviewer, simpler to implement across a larger number of reviewers, and more flexible in a litigation environment where changes in claim scope are commonplace.

More simply put, most patent attorneys talk about claims using claim segments and concepts, i.e., claim terms.  Shouldn't we analyze prior art in the same way that we vet the prior art and consider infringement issues?