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Source Code & Software Patents: A Guide to Software & Internet Patent Litigation for Attorneys & Experts
by Andrew Schulman (http://www.SoftwareLitigationConsulting.com)
Detailed outline for forthcoming book
Chapter 21: 'Reading on': comparing source code to claim limitations
21.1 Code/claim comparison skills
21.2 Code/claim comparison process
- 21.2.0 Applicable to both infringement & invalidity charts, and to practicing/working charts
- 21.2.1 Provisionally parse the claim into 'limitations'
- 21.2.2 Provisionally interpret each element of the claim (Provisional claim construction)
- 21.2.3 Locate each limitation in the code
- 21.2.4 Provisionally map code & limitation
- 21.2.5 Verify code/claim mappings consistency
- 21.2.6 Verify that all elements/steps are present (P showing infringement is AND; while D showing non-infringement is OR [show absence of any one element], D showing anticipatory prior art is AND: 'all-elements rule')
- 21.2.7 Verify that components form a whole (no 'bag of parts', 'laundry list') [turning claim into 'parts list' is important, but insufficient]
- 21.2.8 Verify any specific connectives (the importance of small words)
- 21.2.9 Verify that elements/steps 'face in same direction' as claim [e.g. server- vs. client-based]
- 21.2.10 Consider equivalence or obviousness
21.3 Equivalence
- 21.3.1 Function: purpose, role
- 21.3.2 Way: implementation
- 21.3.3 Result: output, side-effect
21.4 Obviousness [combining multiple source-code references, and combining source-code with non-source references; actually, all charts will likely combine source with non-source references]
- 21.3.1 Function: purpose, role
- 21.3.2 Way: implementation
- 21.3.3 Result: output, side-effect
21.4 Obviousness [combining multiple source-code references, and combining source-code with non-source references; actually, all charts will likely combine source with non-source references]
21.5 Analyzing code/claim matches
- 21.5.1 Uncovering hidden assumptions
- 21.5.2 Names & comments
- 21.5.3 Standards & protocols
- 21.5.4 Is this code actually important?
- 21.5.5 Counts
- 21.5.6 Non-infringing alternatives & design around
- 21.5.7 Static & dynamic analysis
- 21.5.8 Errors & exception handling
- 21.5.9 Counts
- 21.5.10 Counter-examples
- 21.5.11 Non-infringing alternatives & design-around
- 21.5.9 'Evidence of things unseen' (negative & 'solely within' limitations; questions regarding what the examiner has not looked at)
- 21.5.10 General questions source-code examiners should ask themselves
21.6 Thoroughness: Asking who, when, where, etc. questions
- Who
- What
- So what?
- What else
- When
- Where
- Why & Why Not
- How
- Which
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