I have worked with a number of associates new to drafting invalidity charts. A common issue arises about how much of a reference should be quoted in the invalidity chart. The quick answer is "as much as you need to disclose the entire claim limitation." That doesn't really answer the question though. Some might argue that more disclosure is always better because you can always limit yourself later and cut down the quoted passage to the appropriate amount. The concern being that adding in disclosure later will bring about motion practice to exclude the later added material. In another camp, the practice is to keep the quotes clean and crisp to just disclose the precise portions of the reference that you need. There's no easy answer, particularly when how much to disclose is a judgment call. Can a second year associate really be expected to grasp the nuances of the issues well enough to exclude less relevant information about a prior art reference when drafting an invalidity chart? Depending upon the experience of the associate, less is probably more when it comes to invalidity charts. I would expect that you can tell right away whether the associate understands the claim and reference well enough to extract just the right amount of information for the invalidity chart.

A pithy invalidity chart is more focused on the validity challenge issue. This approach also streamlines the review process. Gaps in the disclosure and failure to meet the entire claim limitation become more apparent. That's another reason why we designed our system to focus on discrete concepts of a claim limitation rather than the entire claim limitation. The concepts provide guidance to the review team and focus the review efforts on discrete aspects of the claim group.

Anyone else confront this question in practice?