What goes into our Claim Scope and Evidence of Use Analysis?

Businesses need to understand what a patent portfolio actually protects. Claim Scope Analysis is invaluable in establishing that. Past prosecution, litigation, and post-grant review history of a patent may have resulted in narrowing of claim scope.  Thus, it is important to understand how patents have been previously challenged, and how claims may have been previously construed, not only in Federal Court, but also before the USPTO in any reexaminations and post-grant proceedings, and interference and derivation proceedings.

Evidence of Use (EoU) helps patent owners identify potentially infringing products in the marketplace.  Our EoU charts patent claim elements to specific features of identified products and services, and provides an indication of the strength of patent infringement assertion.

When is Claim Scope and Evidence of Use Analysis Useful?

A claim scope analysis can assist both patent owners and potential buyers/investors in understanding the true coverage of patented claims for a variety of commercialization, licensing, and enforcement contexts. Claim scope analysis can be conducted for a single patent, or a portfolio of patents.

An EoU investigation is critical prior to embarking on a patent assertion campaign.  With the increased scrutiny being placed on patent owners to conduct infringement due diligence, an EoU investigation can help patent owners identify likely infringement versus potential infringement based solely on the claims as they read.For patent investors, an EoU investigation may prove useful to understand the scope of infringement of a potential patent investment, and coupled with a Damages Modeling assessment, may provide price guidance and an indication of future revenue potential of the patents at issue.

For Sell-Side Parties

Envision IP helps sell-side patent owners to understand the scope of their patents in various contexts:

• To assist with claims drafting for new and pending patent applications.
• Prior to embarking on an enforcement or licensing campaign, and as an initial step in an Evidence of Use analysis.
• As part of a patent owners sell-side due diligence when marketing and pitching its patents for sale or financing.
• To determine how its commercialized products are protected by existing patents.

For Buy-Side and Financing Parties

Envision IP assists buy-side entities with understanding the scope of a patent portfolio that is being considered for purchase, financing, or collateral in various contexts:

• Determine third-party infringement of patent claims.
• Identify how patent claims may be commercialized.
• Understand how closely patent claims may cover a commercialized product owned by the prospective buyer or licensee.

Why Envision IP?

Envision IP’s team combines legal and technical analysis in order to determine appropriate narrow and broad claim scope interpretations based on our manual review of the prosecution and litigation history, as well as relevant case law.  With an understand of how the claims may be construed in litigation going forward, we can map claim elements to features of infringing products and services, taking into account the physical product if available, user manuals, technical specifications, and prior litigation involving the product.