Expanding Your Claiming Horizons

Expanding Your Claiming Horizons

by Jeffrey R. Kuester

Mr. Kuester (jeff@kuesterlaw.com) is a partner with the patent, copyright and trademark law firm of Thomas, Kayden, Horstemeyer & Risley, LLP (www.tkhr.com) in Atlanta, Georgia. This article was originally published in the November 2000 issue of Patent Strategy & Management.

It is generally known that the perspectives of patent claims are important for capturing the broadest scope of potential infringers, as well as bolstering the validity of the patent itself. This is particularly true for patents related to any type of networking or telecommunications, such as the Internet, since there is a natural tendency for unwary patent drafters either to only prepare claims directed to one side of the communication connection or to only prepare claims directed to the entire system. While each of the various claiming perspectives has distinct advantages, each also has disadvantages. Thus, patents should include claims with as many different perspectives as possible to ensure that all important perspectives are covered.

At least one critic refers to the perspective problem as one that "plagues" networking-related patents. In principle, however, the solution to the problem is quite simple: again, patent drafters should include many different claiming perspectives and formats in every patent. The money spent on preparing and filing the extra claims will likely be trivial in comparison to the lost opportunity costs of missing infringers, having a patent invalidated, or foregoing increased damages that otherwise would have followed more extensive claims.

Some claiming perspectives for e-commerce patents include server-side, client-side, system level, and communication medium perspectives. It is normally important to have claims that could be directly infringed by competitors since establishing contributory infringement or infringement by inducement entails satisfying additional requirements of proof. Making such a case can also force a patentee into the undesirable role of arguing that users are the direct infringers. Thus, at a minimum, e-commerce patents should typically at least include claims which do not explicitly include steps performed by a user.

It is also useful to have claims which are directed to the client side and higher system level (incorporating both client and server elements) since the validity of the patent may ultimately depend on the combined functionality, and even a chance to establish contributory infringement is better than an invalid patent. Furthermore, it might help a patentee's business if potential customers fear that using a competitor's website means infringing a patent. In addition, server-side claims may be vulnerable to offshore server relocation by competitors since all of the claim elements would also by definition be located and performed offshore. Moreover, system level claims might also command larger monetary damages.

As business to business websites increase in number, it is important to claim from the perspectives of multiple servers. One example of a recent e-commerce patent that includes such perspectives is U.S. Patent No. 6,029,141 for an "Internet-based customer referral system," owned by Amazon.com. This patent, issued on February 22, 2000, is directed toward Amazon's affiliate program, which provides revenue sharing for owners of sites that refer purchasing users to Amazon.com.

The first claim is directed to a "method of selling items with the assistance of associates," which includes elements from the server side perspective (no explicit client side steps) of a server configured to enroll and compensate owners of other websites as affiliates. In other words, since the claim is directed to websites that enroll and compensate owners of other websites as affiliates, a direct infringer of this claim would presumably be another website like Amazon.com.

Another set of claims, beginning with claim 23, is directed to a "method of operating a virtual store to sell items in association with a merchant that operates a merchant Web site." Those server side claims are directed toward the affiliate sites themselves, including displaying items that are available for sale on a separate merchant site, providing a link to that site for purchasing the item, and receiving compensation based on users going through the affiliate site. By including both types of claims, the patent is comprehensively directed toward covering both the websites that maintain affiliate programs and the affiliates themselves.

Paying careful attention to claiming perspectives is critical to ensuring that an e-commerce patent is all that it can be. In short, to create e-commerce patents with strategic value, it is important to draft them so that they will not run out of ammunition after one or two shots.