By Michael P. Kenney

As reported by Mobile Marketer several days ago, a number of mobile marketing firms and SMS aggregators have received a letter from TeleCommunication Systems Inc. ("TeleCom") alleging infringement of two U.S. patents for short code messaging.

This article presents a summary of the rights conferred by U.S. patents and possible defenses to TeleCom's assertions (see story).

U.S. patents in general
Each patent has the same two basic components: (1) Specification -- a written description of the invention; and (2) Claims -- a precise definition of the rights conferred by the patent. The claims must be drawn to a novel, non-obvious and useful process called invention.

The only right conferred by a patent is the right to exclude others from practicing the invention.

The U.S. Patent and Trademark Office ("USPTO") reviews patent applications and confirms that the legal requirements are met. Claims to old or obvious subject matter will be rejected by the USPTO.

The inventor may then amend the claims and/or present arguments. A "negotiation" between the inventor and USPTO regarding the claims, called prosecution, can go on for quite a while.

A U.S. court or the USPTO may determine that a patent should not have been issued and invalidate, i.e. cancel the patent.

The most common reason for invalidation is that the claimed invention was not new or non-obvious. Publications or products used/sold before the filing of the patent is called prior art.

One point confusing to persons unfamiliar with patents is the scope of protection, i.e. what infringes a patent.

Patent infringement has little to do with what is disclosed in the specification and drawings. It is the claims of the patent that are the focus of infringement questions.

To infringe a patent, an accused product or process must satisfy each and every claim limitation in at least one claim of the patent.

The right to exclude allows the owner of a U.S. patent to prevent others from making, using, selling or offering to sell in the United States any product covered by the claims of the patent. Patent infringement is engaging in one of these activities without the authorization of the patent owner.

TeleCom's asserted patents
TeleCom asserts U.S. Patent Nos. 6,891,811 ("the '811 Patent") and 7,355,990 ("the '990 Patent") in their recent letters.

The '811 and '990 patents disclose essentially the same concepts. Both the '811 and '990 patents have effective filing dates of either April 18, 2000 or June 6, 2000.

Since U.S. patent law provides a one-year grace period for filing patent applications, April 18 and/or June 6, 1999 are the "critical date" for TeleCom's patents.

That is, all publications, public uses and sales of products prior to April-June 1999 are prior art to the '811 and '990 patents.

Thus, if it emerges that the products claimed in TeleCom's patents were publicly used or sold in the U.S. or published anywhere in the world prior to April/June 1999, part or all of the '811 Patent and/or '990 Patent may be cancelled by the USPTO or a federal court.

Claims 1, 9, 19 and 27 of the '811 Patent and claims 1, 9 and 20 of the '990 Patent are the broadest claims of each patent.

To infringe the '881 Patent or '990 Patent, each and every element, or an equivalent, of at least one of these claims must be found in the accused device.

Thus, at least initially, focus should be placed on the requirements of these claims and their relationship to the accused product. An opinion on non-infringement or invalidity of a patent requires analysis by an experienced patent attorney.

The history of the negotiation between the USPTO and the inventors of the TeleCom patents is more extensive than usual.

The inventors needed to submit several sets of amended claims and/or arguments in each of the applications.

Amendments and arguments are useful in determining the scope of patent protection.

The greater the volume of amendments and arguments the more that may be determined regarding what infringes the patent and what does not.

Patent defense consortiums
Challenging alleged infringement or attempting to invalidate a U.S. Patent is usually an expensive proposition. This is a great advantage to a company that is seeking to license large numbers of companies.

The financial terms of the license can be kept below the likely cost of refusing the license i.e. challenging infringement or validity.

However, it is possible to collaborate with other alleged infringers in defending against a charge of patent infringement.

Such a group of alleged infringers is often referred to as a "patent defense consortium." Done properly, with financial and antitrust considerations always in mind, a consortium of companies can defend against charges of infringement, challenge the validity of the asserted patents and negotiate with the patent owner regarding licensing terms.

Michael P. Kenney is a patent attorney with Sills, Cummis & Gross P.C., a New York-based law firm. Reach him at .