Landslide Series: Why the "Essence" of an Invention is as Important as the Claims

Level: Advanced
Runtime: 92 minutes
Recorded Date: December 17, 2020
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• Overview of Supreme Court & Federal Circuit Decisions involving Patents
• Identifying the "Inventive Contribution"
        - When Preparing a Patent Application
        - When Prosecuting a Patent
        - When Litigating a Patent
        - When Licensing a Patent
• Summary

Runtime: 1 hour, 32 minutes
Recorded: December 17, 2020


It is a "bedrock principle" of patent law that the claims of a patent define the invention. Yet time and again, district courts, the Federal Circuit, and even the Supreme Court have disregarded claim language in favor of a concept variously termed the "essence," "gist," "heart" or "thrust" of the invention. This is particularly true in the post-Alice legal landscape. This webinar panel explores the delicate interplay between the "essence" of the invention and the claims of the patent application. The panel will discuss recent decisions where the court looked beyond the claims and focused on the essence of the invention in rendering a decision.

The panel will provide practical guidance to litigators analyzing patents and prosecutors drafting patents to best understand and manage the intersection between the essence of the invention and the claims. =

This program was recorded on December 17th, 2020.

Provided By

American Bar Association


Kenneth R. Hartmann II

Harrity LLP

Kenneth R. Hartmann II is an intellectual property attorney with over ten years of experience in the patent field. Currently, Ken focuses on the preparation and prosecution of patent applications in the electrical, electro-mechanical, and software fields. Additionally, he has experience in portfolio analysis, validity/invalidity analysis, clearance opinions, and infringement analysis. Ken is proficient in identifying, capturing, and protecting his clients’ novel concepts through effective patent drafting and patent prosecution.

At Harrity, Ken is engaged in multiple committees and has a strong interest in increasing efficiencies and quality in all aspects of the firm. Ken is on the Harrity Recruiting Committee and enjoys coming up with new ways to find and target candidates to join our growing firm. He is also involved with the Harrity Operations Committee, in particular, a Lean Subcommittee that is focused on identifying and eliminating waste in all departments and practices of the firm. Ken is one of the alpha testers for Harrity’s internal automation tools and actively assists the Harrity Software Development team with brainstorming, developing, debugging, and enhancing the tools.

Prior to joining Harrity & Harrity, Ken was in-house at Hewlett Packard Enterprise and Hewlett-Packard Company for over three years. While in-house, Ken prepared and prosecuted patent applications for multiple business units of HPE and HP. Ken was also involved in intellectual property strategy development, inventor outreach, and portfolio analysis for HPE and HP.

Prior to going in-house, Ken worked in private practice preparing and prosecuting patent applications. Ken also was a patent examiner at the United States Patent and Trademark Office. At the Patent Office, he examined patent applications in the field of multiplex communications.

Jerry Allen Riedinger

Perkins Coie LLP

Jerry Riedinger focuses his practice on patent infringement, trade secret and complex intellectual property litigation. Jerry has over 36 years' experience conducting patent litigation, he has represented clients in more than 110 patent litigation matters, and has been lead counsel in more than 66 patent litigations. He has practiced in over 120 technologies.

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