Creating an effective monetization strategy requires a multi-dimensional game plan, a game plan involving (1) acquisition considerations; (2) campaign costs; (3) revenue potential, taking into account the (i) market landscape and (ii) importance of the read; (4) assessments regarding the (i) strength of the read; (ii) claim construction positions; (iii) validity, including (a) forum considerations and (b) validity assessments; (5) filing strategies; and (6) compelling story telling.
In this post, I’ll be discussing (4)(ii) assessments re claim construction positions.
Claim Construction Positions?
Just as your campaign hinges on the strength of your read, it also hinges on the strength of your claim-construction positions.
A claim-construction hearing is when the assigned judge construes (i.e., decides) on the exact meaning of each claim term in-question, including whether or not to import limitations. This hearing more clearly outlines whether or not your claims read on the accused product or service.
Your claim-construction position represents your chances of winning constructions that support your read—not just once, but on each front.
From a monetization standpoint, the claim construction hearing is when you see the flop (poker analogy)—after this point, you will have a much clearer outlook on the strength of your campaign.
How do you access your claim-construction position?
You’ll need to accurately identify all battleground claim terms—each of these claim terms will need a particular definition for the claim, as a whole, to read on the accused product or service. In law school, they call this “issue spotting.”
1. At this point, ask yourself how many fronts do you have?
If you need to win on more than three fronts, your probabilities of winning drop dramatically. If this is the case for your campaign, find other assertable claims, either in the same patent, another patent in the same family, or a patent in a asserted, non-related patent.
You can use this claim to support a strength-in-numbers approach.
Next, for each battleground claim-term, draw a side-by-side comparison of each your arguments, as well as that of the defendant’s.
Then, for each argument, map support to at least one of the specification and file history (I’ll discuss this more in another post)—this is your legal foundation to your arguments.
2. At this point, do you have direct support from the specification or file history?
If you direct support on each front, your position is strong.
If not, you have a weak link—your campaign will crack at this point, at a minimum.
To determine if you have direct support, ask yourself the following:
2i) Is the read supported by a specific example from the preferred embodiment?
If so, you have direct support.
2ii) If not a specific example, is it a natural evolution or other example of implementing the invention?
Use the reasonable-persons test—who appears to be splitting hairs? Whose argument is more simple and to-the-point?
If it’s a natural evolution or other example, you’re on solid footing.
2iii) If there isn’t direct support and it doesn’t appear to be a natural evolution, is your proposed read something the inventor clearly did not contemplate?
If so, you’re arguing for a stretch and you won’t look credible in front of a jury.