Patent opinion scoring criteria

Scoring for each component of Project 3/Patent opinion option will be done on a 4.0 scale. See below for the breakdown.

Claim construction 10%
Subject matter (101) 20%
Novelty (102) 15%
Nonobviousness (103) 15%
Infringement (271) 15%
Conclusion 5%
Writing/organization 20%
Total (100%)  100%

Below is brief explanation of each category.

Claim construction (10%). Explain what claim 1 of the ‘721 patent means. To do this, use the other parts of the patent (drawings, written description), the language of claim 1, dictionaries, and your common sense. You should pay careful attention to matters such as preamble, transition, and elements. See David V. Radack, Reading and Understanding Patent Claims. You should also consider whether the claim at issue is independent or dependent. See 35 U.S.C. 112; see also MPEP 601.01(n), Dependent Claims. Finally, be careful that your pre-existing knowledge of the actual iPhone does not blind your thinking. What matters is not what the iPhone does, what matters is what the claim covers.

Subject matter/101 (20%). Is claim 1 eligible for patent protection under section 101 of the Patent Act? What type of invention is it? Is it eligible subject matter, or is it barred by one of the court-created bars to protection (laws of nature, natural phenomena, abstract ideas)?

Novelty/102 (15%). Using the pre-AIA version of section 102 and relevant cases, does the existing relevant prior art anticipate the invention? Does section 102 bar Apple’s invention as found in claim 1?

Nonobviousness/103 (15%). Using the pre-AIA version of section 103 and relevant cases, does the existing relevant prior art render claim 1 obvious?

Infringement/271 (15%). If Apple practices claim 1 in devices such as the iPhone, will it be liable to Neonode for patent infringement? Note that this will also involve claim construction of Neonode’s patent.

Conclusion (5%). Can Apple assert claim 1 of the ‘721 as a basis for licensing demands and infringement suits? Will Apple be liable to Neonode for patent infringement? In light of your conclusions, do you have any suggestions for Apple?

Writing/organization (20%). This category looks to matters such as:

  • Is the client letter well-written?
  • Is the analysis of high quality?
  • Is the client letter well-organized on both the macro and micro levels?
  • Because the client’s CEO is not an attorney, is the letter written with the audience in mind?
  • If additional materials are included in the case file, is the case file well-organized?
  • Do citations for patents and patent materials comply with Bluebook 14.9?

Posted Apr. 6, 2015