Claim Diversity

AuthorRonald D. Slusky
Pages243-257
CHAPTER SIXTEEN
Claim Diversity
A patent’s enf orcement is fraught with uncertainty. Claims may contain
unappreciated loopholes—unnecessary elements, unduly narrow termi-
nology, or limitations whose meaning seemed perfectly clear but could
be argued to be indefinite. Another uncertainty is the discovery of prior
art not cited during prosecution.
These problems may not surface until the patent owner attempts to
license or sue on the patent, at which point it is usually too late to do
much about them. Fallback feature claims1 and definition claims2 can go
a long way toward addressing these uncertainties, but it is difficult to
anticipate every possible invalidity scenario.
Yet another source of uncertainty is what the law will be at the time
a patent is asserted.
Claim diversity—the subject of this chapter—is an approach to con-
structing the overall claim suite that addresses these and other uncertain-
ties. A diverse claim suite presents the invention in different ways, for
example, by organizing the limitations differently, using different termi-
nology, or employing different combinations of functional and structural
recitations. A particular defect in a claim that renders it too broad or too
narrow or indefinite may not show up in another claim if the invention is
expressed differently, albeit at the same level of breadth, in the same set-
ting, and using the same statutory claim type. Like the Planned Retreat,
then, claim diversity improves the odds that the issued patent will have
at least one claim that is both valid and infringed.
We never actually know whether any potential problems have been
fixed. Any known claim defects are fixed before the application goes out
the door. We simply take it as an article of faith that the more one claim
differs from another, the more likely it is that any hidden defects in the
first will not appear in the second.
1. See Chapter Six.
2. See Chapter Ten.
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