Prior
Arts Search
Even
if the internet of things (IoT) gets a huge attention recently, the concept of
interconnected devices and connecting
billions of devices to the internet in the IoT is not new and has been
researched for over 10 years. Thus, a large number of non-patent prior arts
including research papers and books can be existed. Therefore, the intensive
search of non-patent prior arts is needed for preparing the IoT patent. US20150019710
illustrates a good example case that intensive search of non-patent prior arts
is required. US20150019710 claims a
method of maintaining interoperability amongst IoT devices connected via an IoT
integration platform. The key elements of the claim 1 at issue are the interoperable
control rule based on the semantic label associated with a user's IoT device.
The USPTO rejected the claim 1 under the AIA 102(b) as being anticipated by a
non-patent prior art regarding the semantic interoperability on the web.
Semantic interoperability enables exchange of data among different web system.
The inventor argued that the semantic label in the non-patent prior associated
with a user's IoT device and amended claim to clarify the distinguished aspects
of the claim form the prior art. However, the USPTO rejected the claim again in
the final rejection based on newly founded non-patent prior art that explicitly
mentions the IoT device in the disclosure.
Claim
Drafting for Maximum Quality & Value
When the IoT patent claims are drafted, several
factors that can make the patent high quality and value should be considered.
The factors are (1) claim scope and broadness, (2) value propositions of a
claim’s novelty point (non-obvious inventive departure from the prior arts), (3)
claim mix (degree to which different kind of statutory claim types (e.g.
apparatus, process, manufactures, composition) are used in a patent), (4) claim
diversity (degree to which different kind of claim formats (e.g.
means-plus-function claim), terminology, arrangement in a given statutory claim
type (e.g. number or order of claim elements) are used in a patent) and (5) claim
setting (degree to which different kind of commercially significant settings
(e.g. component/system or transmitter/receiver) are used in a patent). For
details regarding the claim mix, claim diversity and claim setting, please
consult the books “Invention Analysis and Claiming” and “True Patent Value.”
The features to be considered in the claim
drafting to get the high quality and value patents with the optimal quality to cost
(efforts and time in addition to monetary cost) ratio can be decided exploiting
the insights for products/services that is going to be covered by the patent
(e.g. attributes of a product/service that valued most by customers), the
patent landscape to figure out the competitors’ patents (e.g. whether design
around is required to avoid infringing competitors’ patents) and internal
patenting process (including available patent budget). For example, if a patent
is going to use for excluding the competitors, the key features to be
considered in the claim drafting will be the claim diversity (to avoid
potential infringement loophole) and claim mix (to provide protection against
invalidation).
The best practice in the IoT patent claims
drafting is the Qualcomm patents for the IoT connectivity. Total of 273 patents
issued in the USPTO for the IoT connectivity are reviewed. Following table
summarizes the assessment.
Claim
Drafting & Amendment under Post-Alice 101 Eligibility Test
The basic building blocks of the IoT are devices
that can sense/recognize their surrounding environments and communicate with
other devices, connecting/communicating network medium/infrastructure that can
interconnect devices and connect devices to the internet, back-end IT systems that
can process information (data) obtained by the IoT devices (e.g. cloud
computing/big data analytics) and provide the value added services exploiting
the information. Therefore, a part or whole of data aggregation, data transfer,
data correlation, data analysis and services based on the data are the
essential elements of the IoT inventions, and thus, the elements of the IoT
patent claims. Consequently, many of IoT patents can be identified
as abstract ideas because they are the certain methods of organizing human
activities/mental process or fundamental economic practices or mathematical
relationships/formulas unless the IoT patent claims are drafted carefully to
pass the post-Alice 101 patent eligibility test.
For example, claim 1 in US20140012945
claimed: A method of automatically detecting issues and facilitating the
transmission of alert messages in a home network consisting of a plurality of
consumer electronic devices coupled to a service node, the method
comprising: storing information
regarding home entities in an inventory database, the entities comprising the
household, one or more users within the household, devices in the household,
applications running on the devices, and a community of which the household is
included; defining usage classes for
each entity, the usage classes denoting a primary function associated with an
entity, and comprising networking, productivity, and entertainment; assigning an index value to each usage class
for each entity, the index value comprising an integer value within a fixed
range, and reflecting a relative level of satisfaction associated with the
entity for each respective usage class;
monitoring data regarding usage trends, performance characteristics, and
external variables associated with the entities; modifying one or more of the index values
based on the monitored data; and facilitating the transmission of messages
regarding services or products related to the entities of the home from one or
more parties, wherein the messages are conformed to index values.
This
claim was rejected under 101 by the USPTO because the claim is directed towards
the abstract idea: storing data regarding entities, classifying entities,
assigning index values, monitoring usage data, modifying the index values and
transmitting messages regarding services or products related to the entities based
on index values. Thus, simply transferring the data through the networks or
processed the data for providing services will not sufficient to transform the
nature of the claimed invention into a patent-eligible claim. Additional
elements that are sufficient to amount to significantly more than the abstract
idea are needed. Potential claim elements that can overcome the reject may be
the claim elements that embed/link to a specific machine/article (not a generic
purpose computer) (e.g. medical device, thermostat, application specific
microprocessor/controller) or that either recite a specific series of steps
that resulted in a departure from a human activity or transform a particular
thing to a different thing or improve the technology.
A
possible amendment to the claim could be: A computer implemented method for
transforming data regarding usage trends of home entities into messages
regarding services or products related to the entities (of automatically
detecting issues and facilitating the transmission of alert messages in a home
network consisting of a plurality of consumer electronic devices coupled to a
service node), the method comprising: storing
information regarding home entities in an inventory database of a computing
device in a server or a data center, the entities comprising the household,
one or more users within the household, devices in the household, applications
running on the devices, and a community of which the household is
included; defining usage classes for
each entity, the usage classes denoting a primary function associated with the
(an) entity, and comprising networking, productivity, and entertainment; assigning an index value to each usage class
for each entity, the index value comprising an integer value within a fixed
range, and reflecting a relative level of satisfaction associated with the
entity for each respective usage class;
monitoring by the computing device in the server or the data center
data regarding usage trends, performance characteristics, and external variables
associated with the entities; modifying
by the computing device in the server or the data center one or more of
the index values based on the monitored data; and facilitating the transmission
of messages sent from the computing device in the server or the data center
regarding services or products related to the entities of the home from one or
more parties, wherein the messages are conformed to index values.
Patent
Disclosure Drafting & Prosecution in Alignment with Business Strategy
The IoT patents should support future
development of the IoT businesses and commercial implementations of the IoT
innovations. The disclosures of the IoT patent can be considered as a system
that is consist of the basic building blocks of the IoT as a subsystem: (1) devices
that can sense/recognize their surrounding environments and communicate with
other devices, (2) connecting/communicating network medium/infrastructure that
can interconnect devices and connect devices to the internet, (3) back-end IT
systems that can process information (data) obtained by the IoT devices (e.g.
cloud computing/big data analytics) and (4) provide the value added services
exploiting the information. Then, the system as a whole and each basic building
block as a subsystem can be construed in the disclosures to support future
development of IoT businesses and commercial implementations of the IoT
innovations.
The best practice in strategic IoT patent
drafting and prosecution is the Allure Energy patents for the IoT smart home
application. Allure Energy has developed 22 US family patents for the smart
home energy management up to now starting from two U.S. Provisional Patent
Applications, Ser. No. 61/255,678 entitled a “Proximity Based Home Energy
Management System and Method”, filed on Oct. 28, 2009 and 61/235,798 entitled
an “Alternative Energy Asset Management System with Intelligent Data Framework
Capabilities, filed on Aug. 21, 2009. Allure Energy exploited strategic patent
drafting and prosecution (continuation practices).
Allure
Energy initially drafted the disclosures of a few co-pending patent
applications very broadly in anticipation of future business development. Then,
Allure Energy prosecuted family patents to capture many commercial
implementations as the market evolves. Allure Energy is still developing more
family patents to capture most recent commercial implementations (e.g., IoT
device control using Bluetooth connection, exploiting smartphone for the IoT
device control, autonomous adaptable energy management system).
Significant
number of forward citations shows the high quality of the family patents.
Especially, many patents of most key industry players including Google (Nest
Lab), GE and Honeywell in the smart energy management heavily cited Allure
Energy patents. For example, more than 30 GE patents cited the Allure Energy
patent US8024073. Five patents (US8442695, US8457797, US8509954, US8571518 and US8626344)
exploited to sue Google and Honeywell for patent infringement. A huge number of
claims of the family patents make it very difficult to invalidate the family
patents through PTAB IPR process.
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