Invention Settings and Direct Infringers

• Author: Slusky, Ronald D.
• Pages: 143-163

CHAPTER TWELVE

Invention Settings and Direct Infringers

A patent owner may not realize the full value of her patent unless the

invention is claimed in all of its commercially significant settings.

An invention setting—also called a “claim perspective” or “claim

point-of-view”—is an environment or context in which the inventive

concept is manifest. We will see how a cylinder lock invention, for exam-

ple, can be manifest in at least three different settings—the lock itself, the

key, and the key-cutting machine. An invention setting is “commercially

significant” when it is expected that competitors will implement the inven-

tion in that particular setting.

Realizing the full value of a patent also requires that the claims will

capture the activities of (a) an individual—as opposed to co-acting—

parties who (b) would be direct infringers if unlicensed. That goal is

largely achieved, as it turns out, when the claims define the invention

strictly within the boundaries of its various settings. Drafting and

reviewing claims with individual direct infringers specifically in mind

helps ensure that the claims will capture the activities of those parties.

This chapter discusses patent value principally in terms of license

royalties or monetary damages. The ideas in this chapter, however, apply

with equal force when a patent is to be cross-licensed or when the patent

owner intends to exercise her right of exclusivity. In any of these cases,

the patent owner’s goals may be less than fully realized if the claims

define the invention in less than all of its commercially significant set-

tings and/or do not capture the activities of individual direct infringers.

Two exercises presented at the end of the chapter—one involving a

clothing manufacturing process and the other a web server network—

give the reader opportunity to analyze claims with the ideas of the chap-

ter in mind.

Invention Settings

In this section we explore the notion of an invention’s commercially

important settings and see why a patent’s value depends on claiming the

invention in all of them.

143

Invention Settings Explained

The cylinder lock invention presented in Figure 12-1 illustrates an inven-

tion with multiple settings.

As in cylinder locks generally, the cylinder plug of this lock can rotate

within the cylinder shell only if the key raises the top of each tumbler to

the shear line. Doing that in this particular lock requires that the key not

only raise the tumbler by a particular amount, as in the prior art, but that

the key also rotates the tumbler by some amount. The rotation is caused

by key cuts that are skewed rather than perpendicular to the plane of the

key. Not only are the lock and key unique, but the key must be cut on a

unique key-cutting machine.

The novelty in each of these components stems from a single inven-

tive concept—the fact that the tumblers are rotated. Yet the lock, the key,

and the key-making machine represent three different settings in which

the inventive concept is manifest. The key blank might be a fourth set-

ting if it has some feature that distinguishes it from prior art key blanks.

As another example, two settings for a paper-making invention could

be (a) the composition of the paper and (b) the manufacturing of the

paper.

An invention setting is not the same as a statutory class. The latter is

an invention category—a process, machine, manufacture, or composition

of matter.1An invention setting, by contrast, is an environment or context

in which the inventive concept is manifest. In our lock example, the con-

texts are the lock itself, the key, and the key-cutting machine.

144 PART III: THE CLAIM SUITE

FIGURE 12-1 Invention

with multiple settings