Claim chart

Last updated May 09, 2021

A claim chart is a widely used device in patent infringement litigation.^[1] It is a convenient and effective means for analyzing and presenting information regarding a patent claim. In each, typically, there are two columns: the left column contains the language of the patent claim under analysis, separated into the successive limitations (e.g., elements or steps, integers, parts) of the claim; the right column contains the information relating to the claim element at its left.

Types

There are three principal types of claim chart:

A chart of references (such earlier patents and magazine articles) that allegedly show the invalidity of the patent because of anticipation or obviousness). (This would be a chart prepared by the defendant or party accused of infringing the patent.)
An infringement chart that allegedly shows how the product or process accused of infringement contains each claim element, thereby satisfying the all elements test for infringement. (This would be a chart prepared by the plaintiff or patent owner.)^[2]
Less commonly, a claim interpretation chart that shows, for each claim element, passages in the patent specification or in technical literature that show the proper meaning or interpretation that should be given to the language of the claim. (Either party might prepare this chart.)

Other claim chart types include initial or preliminary infringement contentions (PICs); domestic industry (DI) charts employed in International Trade Commission (ITC) importation actions; expert claim charts; "parts list" charts used for example as demonstrative exhibits; claim charts presented during licensing or settlement negotiations; and design patent charts.

Illustrative example

The following illustrative chart of references to show the invalidity of a hypothetical patent is based on a chart that was prepared by the US Patent and Trademark Office (PTO) and is found^[3] in its Manual of Patent Examining Procedure (MPEP), § 2214:

U.S. Patent No. 9,999,999	Smith [Patent]
Claim 1. A filter comprising a housing,	Smith teaches "the filter housing
the housing having an outer wall,	having an outer wall 1,
a closed end,	a closed end 2,
an open end, and	an open end 3,
a lid	and a hinged lid 4
attachable to the open end...	that is securable to the open end 3 via clamp 5." (col. 6, lines 2-3; Figure 3). The hinged lid 4 of Smith is attachable to the outer rim of the open end 3 via clamp 5.
wherein the housing contains a filter material,	"the filter housing containing filter materials"
the filter material comprising activated carbon....	Smith teaches activated carbon as a filter material: "wherein the filter materials include any mixture of known filter materials such as clay, activated carbon, and any other known filter materials." (col. 12, lines 1-3).

Patentable subject matter chart

Claim charts may also be used to support an argument that a patent claims ineligible subject matter, such as a law of nature or a conventional business practice. The left column of this type of chart is the same as that of the claim charts described above. In the right column, the steps or elements of a well known business concept or a way of organizing human activity are listed. The purpose is to show that the claimed process or system is well known with the addition only of "do it with a computer" (or something similar). Under the Supreme Court's decision in Alice v. CLS Bank such a patent claim is usually invalidated as a mere abstract idea (unless implemented in an inventive manner).^[4]

An example of such a table appears in the defendant's briefs in Walker Digital, LLC v. Google, Inc. ^[5] The court said that the chart showed: "As the following hypothetical [case] (articulated by Google, and not meaningfully distinguished by Walker) shows, these steps can and routinely are performed by, for example, human job headhunters." This is the chart from the Walker Digital case:

Limitations of ’270 Patent Claim 1	Routine Steps Performed when Headhunting
receiving from a first party first data including an identity of said first party	Carol receives a resume from Alice, which lists Alice’s college degree, 8 years of sales experience, interests, and other information, including Alice’s name
receiving from said first party at least two first-party rules for releasing said first data including a rule for releasing the identity of said first party	Alice instructs Carol to disclose her education and sales experience to companies with open sales positions but not to disclose her name unless the company is offering a salary of at least $75,000
receiving from a second party a search request comprising at least one search criterion	Bob asks Carol to find an employee with sales experience for his company
receiving from said second party second data including an identity of said second party	Bob tells Carol that the job at his company is a sales position that pays $100,000 in salary and that the name of his company is Bob’s Software
receiving from said second party at least two second-party rules for releasing said second party data including a rule for releasing said identity of said second party	Bob instructs Carol that she can disclose information about the job opening to any applicant with sales experience and that she can provide the salary offer to any applicant with a college degree but not to disclose the name of his company unless the applicant has more than 5 years of sales experience
processing said search request to determine if said first data satisfies said search criterion	Carol checks to see if Alice has the necessary sales experience requested by Bob
if said first data satisfies said search criterion, then exchanging said first and second data, except said identities of said first and second parties, between said first and second parties in accordance with said first-party and second-party rules	Once Carol determines that Alice has the necessary sales experience for Bob, Carol provides Alice's college degree and years of sales experience to Bob, but not Alice's name, and provides information to Alice about the sales position available at Bob's company and the salary information, but not the name of Bob's company, in accordance with Alice's instructions and Bob's instructions
after said exchanging step, upon satisfying said first-party rule for releasing said identity of said first party, transmitting said identity of said first party to said second party, and after said exchanging step, upon satisfying said second-party rule for releasing said identity of said second party, transmitting said identity of said second party to said first party	After Carol provides Alice’s sales experience and college degree to Bob and provides Bob's salary offer and sales position available at Bob’s company to Alice, Carol gives Alice’s name to Bob upon determining that Bob’s company is offering at least $75,000 in salary and tells Alice the name of Bob’s company upon determining that Alice has more than 5 years of sales experience

As a result of its review of the chart, the Walker Digital court concluded:

Even after carefully reviewing the parties’ briefs and the patents, and questioning the parties about Google’s hypothetical at the hearing, the Court is unable to discern any reason why, in Google’s hypothetical, Carol would not be liable for infringement of Walker’s ’270 patent. Based on the undisputed evidence, and drawing all reasonable inferences in Walker’s favor, the Court concludes that every step of claim 1 of the ’270 patent is performed in Google’s routine headhunting hypothetical. It follows that all the steps of the ’270 patent are routine and []conventional. To allow the claim to survive would disproportionately risk preempting a building block of human interaction, retarding rather than promoting progress, contrary to the very purpose patents are granted.

The court thereafter held the patent invalid.

Related Research Articles

Patent infringement is the commission of a prohibited act with respect to a patented invention without permission from the patent holder. Permission may typically be granted in the form of a license. The definition of patent infringement may vary by jurisdiction, but it typically includes using or selling the patented invention. In many countries, a use is required to be commercial to constitute patent infringement.

In a patent or patent application, the claims define, in technical terms, the extent, i.e. the scope, of the protection conferred by a patent, or the protection sought in a patent application. In other words, the purpose of the claims is to define which subject-matter is protected by the patent. This is termed as the "notice function" of a patent claim—to warn others of what they must not do if they are to avoid infringement liability. The claims are of the utmost importance both during prosecution and litigation alike.

Novelty is a requirement for a patent claim to be patentable. An invention is not new and therefore not patentable if it was known to the public before the filing date of the patent application, or before its date of priority if the applicant claims priority of an earlier patent application. The purpose of the novelty requirement is to prevent prior art from being patented again.

Neither software nor computer programs are explicitly mentioned in statutory United States patent law. Patent law has changed to address new technologies, and decisions of the United States Supreme Court and United States Court of Appeals for the Federal Circuit (CAFC) beginning in the latter part of the 20th century have sought to clarify the boundary between patent-eligible and patent-ineligible subject matter for a number of new technologies including computers and software. The first computer software case in the Supreme Court was Gottschalk v. Benson in 1972. Since then, the Supreme Court has decided about a half dozen cases touching on the patent eligibility of software-related inventions.

State Street Bank and Trust Company v. Signature Financial Group, Inc., 149 F.3d 1368, also referred to as State Street or State Street Bank, was a 1998 decision of the United States Court of Appeals for the Federal Circuit concerning the patentability of business methods. State Street for a time established the principle that a claimed invention was eligible for protection by a patent in the United States if it involved some practical application and, in the words of the State Street opinion, "it produces a useful, concrete and tangible result."

Business method patents are a class of patents which disclose and claim new methods of doing business. This includes new types of e-commerce, insurance, banking and tax compliance etc. Business method patents are a relatively new species of patent and there have been several reviews investigating the appropriateness of patenting business methods. Nonetheless, they have become important assets for both independent inventors and major corporations.

Under United States law, a patent is a right granted to the inventor of a (1) process, machine, article of manufacture, or composition of matter, (2) that is new, useful, and non-obvious. A patent is the right to exclude others, for a limited time from profiting of a patented technology without the consent of the patent-holder. Specifically, it is the right to exclude others from: making, using, selling, offering for sale, importing, inducing others to infringe, applying for an FDA approval, and/or offering a product specially adapted for practice of the patent.

This is a list of legal terms relating to patents. A patent is not a right to practice or use the invention, but a territorial right to exclude others from commercially exploiting the invention, granted to an inventor or his successor in rights in exchange to a public disclosure of the invention.

LabCorp v. Metabolite, Inc., 548 U.S. 124 (2006), is the first case since Diamond v. Chakrabarty in which the U.S. Supreme Court indicated a renewed interest in examining the limits of patentable subject matter for advances in life sciences. Although the Court initially agreed to hear the case, it was later dismissed in 2006 with three Justices dissenting. The defendant's petition to the Supreme Court raised an issue not addressed in opinions from the lower courts: the claim at issue was directed to patent ineligible subject matter and therefore invalid.

In the United States, a valid patent provides its proprietor with the right to exclude others from practicing the invention claimed in that patent. A person who practices that invention without the permission of the patent holder infringes that patent.

The exhausted combination doctrine, also referred to as the doctrine of theLincoln Engineeringcase, is the doctrine of U.S. patent law that when an inventor invents a new, unobvious device and seeks to patent not merely the new device but also the combination of the new device with a known, conventional device with which the new device cooperates in the conventional and predictable way in which devices of those types have previously cooperated, the combination is unpatentable as an "exhausted combination" or "old combination". The doctrine is also termed the doctrine of the Lincoln Engineering case because the United States Supreme Court explained the doctrine in its decision in Lincoln Engineering Co. v. Stewart-Warner Corp.

Lizardtech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, LizardTech sued Earth Resource Mapping (ERM) for patent infringement related to taking discrete wavelet transforms (DWTs) in their ER Mapper program. The court ruled in ERM's favor, finding that some of the claims were invalid, and that ER Mapper did not infringe the other claims. The case has been viewed as an example of the "written description doctrine" which courts may use when applying 35 U.S.C. § 112 to decide the validity of patent claims.

Once an invention is patented in Canada, exclusive rights are granted to the patent holder as defined by s.42 of the Patent Act. Any interference with the patent holder's "full enjoyment of the monopoly granted by the patent" is considered a patent infringement. Making, constructing, using, or selling a patented invention without the patent holder's permission can constitute infringement. Possession of a patented object, use of a patented object in a process, and inducement or procurement of an infringement may also, in some cases, count as infringement.

Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014), was a 2014 decision of the United States Supreme Court about patent eligibility. The issue in the case was whether certain claims about a computer-implemented, electronic escrow service for facilitating financial transactions covered abstract ideas ineligible for patent protection. The patents were held to be invalid because the claims were drawn to an abstract idea, and implementing those claims on a computer was not enough to transform that idea into patentable subject matter.

DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, is the first United States Court of Appeals for the Federal Circuit decision to uphold the validity of computer-implemented patent claims since the Supreme Court's decision in Alice Corp. v. CLS Bank International. Both Alice and DDR Holdings are legal decisions relevant to the debate about whether software and business methods are patentable subject matter under Title 35 of the United States Code §101. The Federal Circuit applied the framework articulated in Alice to uphold the validity of the patents on webpage display technology at issue in DDR Holdings.

Versata Development Group, Inc. v. SAP America, Inc., 793 F.3d 1306, is a July 2015 decision of the Federal Circuit affirming the final order of the Patent Trial and Appeal Board (PTAB), the recently created adjudicatory arm of the United States Patent and Trademark Office (USPTO), invalidating as patent ineligible the claims in issue of Versata's U.S. Patent No. 6,553,350. This was the first case in the Federal Circuit reviewing a final order in a Covered Business Method (CBM) invalidation proceeding under the America Invents Act (AIA). The case set an important precedent by deciding several unsettled issues in the interpretation of the CBM provisions of the AIA>, including what are business-method patents under the AIA and whether the AIA authorizes the PTO to hold such patents invalid in CBM proceedings on the ground that they are patent ineligible under 35 U.S.C. § 101 as "abstract ideas."

Walker Process Equipment, Inc. v. Food Machinery & Chemical Corp., 382 U.S. 172 (1965), was a 1965 decision of the United States Supreme Court that held, for the first time, that enforcement of a fraudulently procured patent violated the antitrust laws and provided a basis for a claim of treble damages if it caused a substantial anticompetitive effect.

Akamai Technologies, Inc. v. Limelight Networks, Inc., 797 F.3d 1020, is a 2015 en banc decision of the United States Court of Appeals for the Federal Circuit, on remand from a 2014 decision of the U.S. Supreme Court reversing a previous Federal Circuit decision in the case. This is the most recent in a string of decisions in the case that concern the proper legal standard for determining patent infringement liability when multiple actors are involved in carrying out the claimed infringement of a method patent and no single accused infringer has performed all of the steps. In the 2015 remand decision, the Federal Circuit expanded the scope of vicarious liability in such cases, holding that one actor could be held liable for the acts of another actor "when an alleged infringer conditions participation in an activity or receipt of a benefit upon performance of a step or steps of a patented method and establishes the manner or timing of that performance." In addition, the court held that where multiple "actors form a joint enterprise, all can be charged with the acts of the other[s], rendering each liable for the steps performed by the other[s] as if each is a single actor."

Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, is a 2016 decision of the United States Court of Appeals for the Federal Circuit in which the court, for the second time since the United States Supreme Court decision in Alice Corp. v. CLS Bank upheld the patent–eligibility of software patent claims. The Federal Circuit reversed the district court's summary judgment ruling that all claims were patent–ineligible abstract ideas under Alice. Instead, the claims were directed to a specific improvement to the way computers operate, embodied in the claimed "self-referential table" for a database, which the relevant prior art did not contain.

References

↑ Such charts appear in U.S. patent litigation as well as outside the US, e.g. the UK IPEC: "It is likely to be necessary to break down a patent claim into suitable integers (i.e. separate parts) in order to explain a case on infringement with reference to specific elements of the alleged infringing product or process. This may be most conveniently done in the form of a table or chart annexed to the statement of case." (The Intellectual Property Enterprise Court Guide, April 2014)
↑ These charts often contain diagrams of the relevant elements, to show that the device contains the element as recited in the claim. See, for example, this infringement chart.
↑ Albeit not parsed as carefully as here; in contrast to the actual MPEP 2214 example, the chart here has broken down the claim into limitations, and has split the corresponding quotation into parts corresponding to each limitation.
↑ See KENEXA BrassRING, INC. v. HireABILITY.COM, LLC (D. Mass Apr. 28, 2015) ("However, Alice made clear that the underlying principle behind both cases was that patents directed only to 'organizing human activity' are invalid."); Open Text S.A. v. Box. Inc. (N.D. Cal. Jan. 20, 2015) ("a 'method of organizing human activity' [is] an unpatentable abstract idea"); Amdocs Ltd. v. Openet Telecom, Inc. (E.D. Va. Oct. 24, 2014) ("A claim directed to 'a method of organizing human activity' seems presumptively patent ineligible."); see also Planet Bingo, LLC v. VKGS LLC, 576 Fed. App'x 1005, 1008 (Fed. Cir. 2014) (nonprecedential) (holding that methods and systems for "managing a game of Bingo" were similar to "organizing human activity" and therefore directed to a patent-ineligible abstract idea).
↑ 2014 WL 4365245 (D. Del. Sept. 3, 2014). See also Joao Bock Transaction Systems, LLC v. Jack Henry & Associates, Inc., 2014 U.S. Dist. LEXIS 172567 (D. Del. Dec. 15, 2014).

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[1] Such charts appear in U.S. patent litigation as well as outside the US, e.g. the UK IPEC: "It is likely to be necessary to break down a patent claim into suitable integers (i.e. separate parts) in order to explain a case on infringement with reference to specific elements of the alleged infringing product or process. This may be most conveniently done in the form of a table or chart annexed to the statement of case." (The Intellectual Property Enterprise Court Guide, April 2014)

[2] These charts often contain diagrams of the relevant elements, to show that the device contains the element as recited in the claim. See, for example, this infringement chart.

[3] Albeit not parsed as carefully as here; in contrast to the actual MPEP 2214 example, the chart here has broken down the claim into limitations, and has split the corresponding quotation into parts corresponding to each limitation.

[4] See KENEXA BrassRING, INC. v. HireABILITY.COM, LLC (D. Mass Apr. 28, 2015) ("However, Alice made clear that the underlying principle behind both cases was that patents directed only to 'organizing human activity' are invalid."); Open Text S.A. v. Box. Inc. (N.D. Cal. Jan. 20, 2015) ("a 'method of organizing human activity' [is] an unpatentable abstract idea"); Amdocs Ltd. v. Openet Telecom, Inc. (E.D. Va. Oct. 24, 2014) ("A claim directed to 'a method of organizing human activity' seems presumptively patent ineligible."); see also Planet Bingo, LLC v. VKGS LLC, 576 Fed. App'x 1005, 1008 (Fed. Cir. 2014) (nonprecedential) (holding that methods and systems for "managing a game of Bingo" were similar to "organizing human activity" and therefore directed to a patent-ineligible abstract idea).

[5] 2014 WL 4365245 (D. Del. Sept. 3, 2014). See also Joao Bock Transaction Systems, LLC v. Jack Henry & Associates, Inc., 2014 U.S. Dist. LEXIS 172567 (D. Del. Dec. 15, 2014).

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