Invention Analysis and Claiming:
Individual Direct Infringers

By Ronald Slusky

We saw last month that a patent owner may not realize the full value of a patent unless the invention is claimed in all of its commercially significant settings. A "setting" is an environment or context in which the inventive concept is manifest.² and is "commercially significant" when it is expected that others will implement the invention in that particular setting. For example, the settings for cylinder lock having uniquely configured tumblers and thus requiring a unique kind of key could include the lock itself, the key, the tumblers, the key- making machine and possibly even the key blank if patentably distinct from key blanks for prior art locks.

Thus although we might think to claim the lock and be done with it, others might only carry out the invention in other settings by only cutting keys; or only manufacturing the key-cutting machine, or only making replacement tumblers for aftermarket sale to locksmiths. None of these parties' activities would be covered by a claim to the lock per se. Hence the desirability of claiming the invention in the other settings.

Beyond claiming the invention in all of its commercially significant settings, realizing the full value of a patent further requires that the claims capture the activities of a) individual—as opposed to co-acting— parties...