Is 530 Patent Claims Enough? Just Barely
Last month, another major tech company faced a nine-figure damages award for patent infringement. This time, a Delaware jury found Microsoft liable for infringing an AI software patent, to the tune of $242 million.
This came on the heels of the $525 million verdict against Amazon in April, which I wrote about in a recent post: Kove v. Amazon.
The Microsoft case has a long and fascinating background. It starts with a pair of inventors at SRI International, a non-profit research institute in Silicon Valley. In the late 90s, they developed the AI technology that Apple licensed and used to create Siri.
Although the inventors published their work before filing any patent applications, they used the 1-year grace period to secure 9 U.S. patents brimming with no less than 530 claims. The patents were eventually sold to IPA Technologies, who asserted them against Microsoft, Amazon and Google in 2018.
Over the course of six-plus years of district court and PTAB litigation, many of the original patent claims fell to invalidity challenges filed by the tech titan defendants. But 3 claims survived to support the $242 million damages award last month.
3 claims out of 530! That’s all that survived the gauntlet of modern patent litigation. It goes to show that if you’re going up against heavy hitters, you better bring an arsenal. And the 3 claims that were infringed? They were among the final claims in the last U.S. patent to be granted in the patent family.
Court filings this week indicate that Microsoft has settled the case.
How to Strengthen Your Patent Portfolio Against IPR Challenges
When you’re awarded a patent, you might think the patent process is finished. But your competitors might think otherwise! In highly competitive industries, companies often try to have their competitors’ issued patents canceled by the patent office. In that case, the patent owner has to play defense and show that their patent rights should be sustained.
The main process for having an issued patent canceled by the U.S. patent office is called inter partes review (IPR). In this post, we outline some of the ways that you can strengthen your patent portfolio against IPR challenges.
How Many Claims Should My Patent Have?
There’s often confusion about the purpose and impact of adding more claims in a patent application, and inventors often wonder whether the number of claims will affect the overall strength and value of the patent. The claims are the most important part of a patent because they determine what it actually covers. But does that mean that more claims are always better?
In this blog, we discuss why it’s beneficial to have several claims in a patent application and how to determine when you’ve added enough.
International Patent Protection: Developing a Global Strategy
Early-stage tech companies often focus on establishing themselves in the domestic market first, meaning that they only consider breaking into international markets after achieving local success. But if you don’t plan early, you may not be able to protect your invention in foreign countries — which can be a costly mistake.
In this post, we discuss key procedures and considerations that you should keep in mind if your business has competitors abroad and how to go about developing a global patent strategy.
Meet the Team: Mary Morris
Mary has been our legal assistant since 2023, and has quickly become a vital member of our team! As our legal assistant, Mary tackles a variety of responsibilities including preparing and proofing documents, entering data in our practice management systems, tracking expenses and billing information, coordinating deadlines, reporting updates to clients, and making sure our office has anything and everything that it needs to run smoothly!
With all the hats she wears in our office, Mary feels most rewarded being able to make an impact for the firm and its clients. She enjoys the excitement of learning and digesting something new every day. No matter what the challenge, Mary tackles it head-on with a willingness to learn and ask lots of questions!
Outside the office, Mary’s favorite thing to do is travel throughout the U.S. and the world! She also spends her time cooking good meals, practicing self-care, and binging a good show or podcast.
Michael K. Henry, Ph.D.
Michael K. Henry, Ph.D., is a principal and the firm’s founding member. He specializes in creating comprehensive, growth-oriented IP strategies for early-stage tech companies.