Random notes on self-interest theory when creating services and products. Merging the ideas from Mike Acton to Clay Christensen.
Quick introduction to the adventures and challenges of transitioning from college to law school, way back in 1993.
A Darwin Talk video from EvolveLaw raising a question about what the future legal teams might look like.
Lithosphere is not alone in talking about applying technology to improve legal processes. From the blog below, there's even a class at Georgetown Law School called "Technology, Innovation and Law Practice." The blog observes that:
The technology is available now to improve some of the functions that lawyers typically perform.
from 3 Geeks and a Law Blog: The Next Generation of Computers Practicing Law. Niki Black of MyCase also explains that
I truly believe that over the next few years, lawyers who embrace and utilize technology effectively–in particular Internet-based and mobile tools–will undoubtedly have an edge over their less tech-savvy colleagues.
from MyCaseInc blog: Can you automate the practice of law?
Our belief is that by replacing a typical patent lawyer function (manually organizing/analyzing patent claims and prior art in a folder structure) with new technology-based tools (database environment providing an edge over standard patent claim chart analysis), a lawyer can have a better grasp on the analysis. A deeper understanding of the more subtle issues can then be achieved.
We focus on developing tools that enhance the understanding of the boundaries of patent protection. The tools can be applied to infringement and invalidity analysis, but the underlying principles are the same - what is the proper scope of the claims. If the claims are too broad based on the prior art, then a challenge can be made. Does the claim scope really reach an accused product or service? All of this is shaped by the prosecution history of the patent, prior art considered during prosecution, any stated reasons for allowance, and prior art not considered during prosecution. This is a lot of information to track, process and understand.
Give us a call and see how we can help you in your practice.
Following up on our earlier post, below is a quick illustration to show you how PatDek organizes claim concepts and uses the concepts to analyze prior art for invalidity contentions.
interface screenshots
As you can see, the concepts are defined using the Administration interface (left) and then used to analyze prior art references (right, top and bottom). In this way, the Administration interface establishes the concept for a case to be considered by a user when analyzing prior art references for a case.
claims understood as concepts
Here is a pictorial of the process that describes how to understand the idea of "concepts" as they relate to patent claims and prior art. The main idea, as shown in the graphic below, is that patent claims can be represented concepts. We utilize this process because patent claims often use the same or similar words to cover a particular feature.
As above, the color-highlighting generally indicates features recited in the claim language. The different colors represent different features recited in the claim. The user determines how a claim can be divided into different concepts. In the next graphic, we show a group of concepts. Once concepts are identified for one claim, the same concepts can be used for other claims.
As below, three claims can be represented by seven concepts. Because certain concepts are repeated (as indicated by arrows), they are reused in different claims.
concepts representing multiple patent claims
In a final graphic (below), the concepts are shown to link the patent claims and the prior art. By analyzing the prior art using concepts, the user does not need to repeatedly refer back to the claim language. The concepts, not claim language, are used to analyze the prior art (another post on claim concepts here). At this level of prior art review, different teachings of the references can be matched up together. These mashups of the references form patent claim charts and invalidity contentions. Using the PatDek interface, different prior art mixes can now be generated by the user.
linking multiple patent claims to prior art using concepts
Has this happened in your patent litigation practice before? Discovery is ongoing and you're working on finalizing your invalidity contentions against 20-30 claims from 2 patents with your invalidity expert. Your case is well-organized, you've refined your invalidity positions, and selected the most relevant disclosures for your 102 and 103 contentions.
Everything is, for the most part, under control. In litigation though, there's a reason why we expect the unexpected. Suppose now that the plaintiff-patent owner attempts to seize an advantage and asserts 2 more patents against your client adding another 20 claims into the case. If you weren't using PatDek, you would scramble a team of associates to extract portions of your existing invalidity contentions/charts and pull together another 50-60 charts against the newly asserted claims.
If you were using PatDek for your case, the solution is much simpler.
Step one - type in each patent number to add the newly asserted patents to your case.
Step two - link your existing concepts to the new claims of interest for each newly asserted patent.
Step three - select the claims and references you want in your charts.
It really was that simple for one of our clients. In a couple of hours, the client had added in the new patents, linked existing concepts to 20 or so claims, and was generating invalidity charts against those new claims. The new patent claims were closely related to the other claims in the case so no additional concepts were needed, nor was a re-review of the prior art for new concepts necessary. If new concepts were required, the concepts could be added, linked to the relevant claim limitations, and a focused review of the prior art could be done looking just for the new concept(s).
PatDek can adapt to changes in your case. Are you really prepared if you're not using PatDek?
We received a question about why we chose a framework that analyzes claims using claim segments or "concepts" instead of focusing on an entire claim limitation. On our site, we explain the idea behind claim concepts and the benefits of this approach. Although the "claim concept" approach can be used to discretely parse claim limitations for invalidity analysis, there are other benefits. First, in a number of litigations, claim terms, not claim limitations, are normally in dispute. Plaintiffs often read claims broadly for infringement, whereas defendants tend to read claims narrowly for non-infringement. If the prior art analysis were done on a limitation by limitation basis, it would be more difficult to precisely account for such disputes during the prior art analysis. It would also be more difficult to alter the initial analysis later. In certain circumstances, you may need to alter your invalidity charts and contentions to account for the Court's claim constructions. Our goal has always been to analyze each reference thoroughly, and only once. The analysis for each reference can be revisited and updated using our platform, but the bulk of the analysis should be completed during the first pass. With PatDek, you're not changing the analysis by editing charts, instead you're changing the analysis for concepts as appropriate for each reference.
So how does the concept approach really help? As an example, consider the following portion of a claim limitation: activate a mobile device using an authorization code. Assume that there is a dispute about the term "activate." One side argues that "activate" means that the device is authorized for additional use beyond its standard use, while the other side posits that the term means that the device, previously not authorized for any use, is now authorized for some use. Using the concepts approach, we would consider the entire claim limitation embodying at least three concepts: (1) activate; (2) mobile device; and (3) authorization code. If we wanted to accommodate the claim limitation dispute in our analysis, we could use alternate concepts for the term "activate" to capture the claim construction issues: (1a) activate from non-use state; and (1b) activate for further use. The entire claim limitation would then embody four analysis concepts: (1) activate from non-use state; (2) activate for further use; (3) mobile device; and (4) authorization code. Our invalidity analysis for each reference would consider both forms of the term "activate." Charts and contentions using those concepts could also address each form of activate, and, following a claim construction ruling, charts and contentions could be populated with disclosures from references under the prevailing construction of activate.
If the analysis was done on a claim limitation basis, a reference may address the non-use state of activate, but not include a disclosure of an authorization code. Other references might disclose both activating for further use with an authorization code. If the analysis only considered the entire claim limitation, how could the system identify the appropriate 103 combinations and how could someone review which references are relevant following claim construction? Perhaps you would have to re-review all teachings of the claim limitation in question and parse out the relevant teachings post-claim construction. This would require another review of the references. This would also be time consuming if there were 50+ references. Using our concept-level system, a link to the prevailing concept and the claims in question would only need to be changed - the system would then extract the appropriate analysis for charts and 103 contentions using the new linked concept. No further analysis would be required.
As a further example, the concept approach allows prior art analysts to look at the concepts only, independent of the claim language. The analysts/reviewers do not need to be fully versed in the claims. Carefully chosen concepts reaching the breadth of the claim limitations would provide the necessary targets for the prior art review. The review can even be handled by a separate team of reviewers that take a first-cut to enter information into the system for 30-50 references. A supervising attorney can then review and approve first-cut analysis on a reference by reference basis. It would be more difficult to have a separate team of reviewers for a project when the analysis were performed on a claim limitation by claim limitation basis.
For each of these reasons, we believe the concept approach is easier to understand for the reviewer, simpler to implement across a larger number of reviewers, and more flexible in a litigation environment where changes in claim scope are commonplace.
More simply put, most patent attorneys talk about claims using claim segments and concepts, i.e., claim terms. Shouldn't we analyze prior art in the same way that we vet the prior art and consider infringement issues?
For joint defense groups (JDGs) crafting invalidity contentions, the overriding problem is merging the resulting analysis together. JDGs are formed with the desire to collaborate and share resources. There are several ways a JDG can collaborate to create common invalidity defenses. In one arrangement, the law firms forming the JDG divide up the references, draft invalidity charts for the references, and then circulate the charts to other JDG members. One law firm then collects the charts to assemble the JDG's invalidity contentions. The contentions would include a list of references, proposed reference combinations, a coordinating document with reservations of rights, and an appendix of charts.
In another arrangement, each JDG member could serve their own individualized contentions, with the group merely exchanging charts for the set of prior art references. Each defendant simply leverages the initial charts and decides whether to include all or portions of the group's charts in its individualized contentions.
Can this process be improved?
We think we can help. If you've been reading this blog, you'll understand that we take a different approach. Instead of jumping into the process of prior art review and generating charts, we propose taking a step back to consider what claim features need to be extracted from the prior art.
Once a set of features have been identified (representing all aspects of the target claims), the analysis process begins and ends by looking for these features in the prior art. With this process, the group's analysis of the features can be merged together. References can be directly combined into multi-reference charts. The relationship between multiple references can also be better understood. Gaps in the prior art can be identified quicker. This leads to a better assessment of whether additional searching is required. Charts can also be generated on command for any reference against any claim.
With a web-based portal for the case, each JDG member has access to the prior art library and everyone's analysis. Each prior art contribution can be reviewed in real time. Since invalidity charts can be generated at the click of a mouse, the review process, not the charting process, takes center stage. A list of all references can be delivered with a few clicks so no reference is omitted. Combination lists can be easily generated. The main benefit, though, is that the group has a comprehensive understanding of each reference through various reports.
Under a traditional approach with each defendant just creating invalidity charts, you were less likely to understand the references reviewed by other defendants. To help in understanding prior art reviewed by another JDG member, we've created a report feature that summarizes each reference. Instead of looking at a reference's disclosure in the form of an invalidity chart, we provide a feature-based report for each reference. The report provides citations and associated text for each feature disclosed by the prior art reference.
Here is an excerpt from a prior art reference report:
prior art reference report excerpt
You can see that quoted passages, citations, and the target patents for this reference are all included in the report. Depending upon priority date issues, you can designate whether a reference should be linked to a target patent for your invalidity contentions.
If you'd like to see the entire 8-page report for this reference, just send us a quick note and we'll send it out to you for further review.
We are just about finished beta testing a new feature. This new feature provides a visual representation of your prior art analysis. With several mouse clicks, you'll be able to see how many times a particular concept is found in your set of prior art under review. This feature allows a group of reviewers to not only focus their review efforts more precisely, but also determine whether further searching will be required. For joint defendants in a litigation, the heat map will enable more in depth discussions about prior art issues on a group conference call. Counsel for each defendant will be able to see how the group's analysis is proceeding and determine where to focus resources to improve the overall analysis. In the context of crowdsourcing your prior art analysis, you can now visualize how effective the group-based search was for the target concepts.
After the jump you'll find a sneak peak of the new "heat map" feature we are testing.
This is the main screen to select the concepts and claims of interest:
heat map concepts selection
Here is a results screen for the heat map:
heat map results showing concepts/reference total
The displayed heat map provides a drill-down link to identify the references for each concept and relationship to claims.
heat map drill-down with references for a concept
In a future post, we'll discuss our efforts at crowdsourcing defense efforts against the Lodsys patent portfolio.
In this post we'll consider a topic I've thought about for some time - crowdsourcing. The concept is not new and has been applied to photography, social networks, software coding, and in a very limited way, prior art searching. Back in 2002, we were confronted with the problem of organizing a large set of prior art references. Having been involved in a database project that organized IP assets, the database concept seemed appealing. We searched for a commercial solution to our problem, but came up empty. We thought about what we really wanted to accomplish and settled on a goal of extracting and retaining the most relevant information from each prior art reference so that the information could be quickly searched. We designed a tool for that purpose in 2002. The tool performed the retention function very well. Because of the way we configured the database, extracting relevant information via search, beyond a list of references, was difficult. In 2003, we developed a Microsoft Word scripting tool that crudely integrated with the database to generate a form of invalidity charts.
So what does this have to do with crowdsourcing?
We've developed a system that can handle multiple, concurrent connections to a defined problem. Think of the defined problem as a project template. The template identifies what information is sought, and the users provide information about the problem using the project template. In other words, define the problem - then solve the problem. To this end, we have developed a way to discretely define and present a problem - how to invalide patent claims - to a group of people. The system can receive input about the problem and mesh that input with input from other group members. Isn't this what crowdsourcing is all about?
A more concrete example is a joint defense group defending against patent infringement allegations. One of the litigation defenses invariably is that the patent in question is not valid. The project template can be used to receive information from attorneys, at different law firms. This information is directed to the claimed features found in the prior art, to form the invalidity contentions relied upon the joint defense group members. We see the beginnings of a crowd for this type of project.
The project template could even be used to receive prior art search result submissions. In this case, the searchers would be the crowd. Sounds simple enough and there are companies that already provide this service. Now imagine that instead of commissioning a search and having attorneys review the results, the searchers themselves have access to a platform for sharing their understanding of the prior art. Not just the prior art references, but information contained within each prior art reference as it relates to the defined problem. Not a writeup in a document, but data entered into a database to be mixed with the data from all other searchers. Under this approach, the individuals most knowledgeable about the prior art (the searchers) take the first pass at the analysis and record their analysis into the system. Attorneys would then review and vet how closely the analysis matched features found in the claims.
Even Article One Partners, a noted leader in the search field, has not achieved this level of project focus. In the Article One crowdsourcing model, a search request is broadcast to a vast team of researchers. The researchers then review their archives and report back their findings by identifying relevant prior art, each vying for a bounty. The knowledge and understanding that each researcher has about the prior art is not transferred in this process, however. What if this could be done in a different way so that the searchers knowledge is transferred in the process?
We think we can fill this gap with our system. Our system already provides a bridge that allows users to transfer their knowledge about the prior art using a project template. The information entered into the project template can also be used to generate invalidity charts because the template fields are already linked to the claims of the target patent. We have even considered a way to anonymize the identity of individuals inputting information into a project template if anonymous submissions are desirable.
We believe this is a different way of thinking about prior art searching and litigation workflow. We hope you'll give us a few moments of your time and consider having us demonstrate the system to you and your team.
Software has transformed the document review process, leveraging technology to allow lawyers to be more productive during the review process. Why haven't similar advancements been applied to aspects of patent litigation, beyond document review? Consider part of an e-discovery blog post (reproduced below), which points out shortcomings of the document review process. The same idea applies to invalidity contentions - cut & paste, editing charts, changing citations - this is drudgery.
"In short, by using predictive coding, the authors say that associates no longer have to suffer the drudgery of endless document review. Instead, they can spend time to understand facts and tell a good story, which is, after all, what litigators should do."
The discovery process has evolved so that technology now takes a first pass at reviewing large document compilations before attorney review begins. Instead of toiling away and churning documents, the attorneys spend more time analyzing the case and formulating thoughts that advance case strategy.
PatDek is a first step in the right direction for patent contention workflow. The invalidity contention process should be about reviewing the art, understanding the art, and configuring the references to tell a story about the technology, not just presenting it. It's the art, and the story the prior art teaches, that matters.
In nearly every patent litigation, section 103 obviousness contentions will be served. How do you do this in your cases and what are your options? In later posts we'll discuss the specific approaches, including "combination buckets," section 103 invalidity charts, serpentine lists of combinations, but here we'll discuss how PatDek can give you an advantage in setting forth section 103 combinations. Because the PatDek platform is collaborative, a single form-based interface is presented to each reviewer. The prior art review team can consist of many lawyers, at different law firms, and at different locations. With a single interface, all analysis information for each reviewer forms a single data set. Resulting invalidity charts can then be generated in a uniform fashion. More importantly, the analysis of one reviewer can considered in combination with the analysis of all other reviewers.
This approach provides many benefits. For example, three references analyzed by three different reviewers can combined as a 103 combination. This specific combination may ordinarily be overlooked under the traditional approach to prior art review. A second benefit is that a chart can be generated with information from different references with only a few mouse clicks. The traditional approach requires cutting-and-pasting information from one chart to another.
Finally, all relevant combinations can be identified, considered, and most importantly, provided to the plaintiff as part of your invalidity contentions. More and more Courts now require a specific listing of each prior art combination that will be relied upon in litigation. Under the traditional approach, there are very limited ways of providing this specificity, and in a lot of instances, some of the proposed combinations may not be accurate or supportable.
Let's suppose that you have just been retained to represent a client to defend a patent litigation in ED Texas. For sake of simplicity, it's a single defendant case. A scheduling order is later entered and invalidity contentions are due in about 3 months from today. To further simplify the discussion, let's assume there's only 1 asserted patent having 4 independent claims and 26 dependent claims (30 total claims). In 45 days the plaintiff will identify the asserted claims, and 45 days later invalidity contentions are due. What's the plan?Let's assume that you have about 20 prior art references. These references may represent a distilled set of references received from a commissioned prior art search, maybe the references come from your own search, or maybe the references were delivered to you from the client. The point is, you have some prior art that needs to be analyzed, you're not yet sure which claims will be asserted, but you need to start reviewing and analyzing the prior art to determine if this art will be of any use in the litigation.
One approach is to chart each of the 20 references against the 4 independent claims and wait for the set of asserted claims to be identified. Another approach is to focus on the most narrow two or three asserted claims of the set of 30 claims and just chart these narrow claims (if the narrow claim is invalid, then the broader claims will be captured as well).
There are other approaches, but either of these approaches makes sense as a first cut at analysis. Your case will be well-positioned If each reference individually meet the limitations of the target claims. Most of the time, however, this is not the case. Each reference is likely to have disclosure gaps for specific claim limitations. In the end, you'll end up with 20 charts (one for each reference) against a set of claims (four independent claims or the three narrow claims) with blank rows for certain features/limitations. In other words, not a single reference teaches each limitation of any one claim. A good start, but your team is going to have to determine which references are properly combinable for section 103 contentions or you're going to need additional references.
Assume that the 20 references are already the best references available. The difficulty now is in identifying all possible two and three way combinations for this set of 20 references to support obviousness contentions. In another post we'll explore the math of the combination dilemma, but for now consider that the total number of two-way combinations for 20 references (order not important, no repetitions) is 190 combinations. For three-way combinations of 20 references, there are 1,140 possible combinations. Of course, not all combinations will work because references A and B together may not disclose each limitation of claim X.
We've solved this problem for you with PatDek. PatDek identifies each single reference, and the two and three way combinations of references, that teach each claim limitation for any claim of interest. More importantly, the type of analysis your team performed to create your charts (against the target claims) is the same type of work product that PatDek receives from your review team.
The above example described a straightforward, single patent, small set of claims situation. How would you approach the more difficult situation of 3 patents, a potential claim set of 150 claims, in a joint defense situation of three defendants, each represented by different law firms under the same three month window? We've thought about that too and have a solution.
feature mapped claim limitation
Here's a snapshot showing how a case-specific database can be configured to track features for claim limitations. Instead of looking at each claim, the database can be configured to look at specific aspects of a claim. This allows a review team to extract features from a prior art reference during the analysis phase, and also allows changes to be made for a reference, later when needed, directed to only portions of claim.
This approach may seem non-traditional. We believe that this approach provides a solid foundation for the case team as the litigation advances from preliminary assessment, through preliminary contentions, onto fact discovery/contentions, and then as it moves to expert discovery and dispositive motions. The case is continually focused through the use of a database and changes to the data set. We can help you understand this revised work flow. Hopefully you'll consider how these different ideas can assist you when preparing your claim. You can view your evolving understanding of the target claims in different ways - claim limitation mapping is just one alternative.
progress table for Patdek
Would this Progress Table help you better understand how the prior art review process is evolving? Do your invalidity charts give you this type of information?
This is just one of many ways to help you better understand the claims of your case and scrutinize how the prior reads on the recited claim features. In-house counsel can benefit from this viewpoint as it helps discuss where the review process is and where it is heading. This is the type of information that can be relied on beyond the static invalidity charts. Litigation is about framing the issues. Software can help with that process.
PatDek solves the never-ending, nagging problem we face as patent litigators - cutting/pasting/editing claim charts with changes, as our analysis of the prior art evolved over time. Maybe the change was adding or removing a passage from several charts, harmonizing citation formats, or altering the mapping of certain disclosures to specific claim limitations based on group feedback. For whatever reason, someone would identify a change that needed to be made for a prior art reference, and this change needed to be made across a number claim limitations and for a number of charts. Usually multiple edits were required and all of these edits needed to be made to all of the charts. These changes were time-consuming and interfered with our primary task - reviewing potentially relevant prior art references. For a given project, editing charts decreased the time that could be better allocated to applying the most relevant references against the target set of claims.
In our minds, effectiveness was impacted by the editing process. Now consider the next phase of litigation, after preliminary invalidity contentions. The charts may need to be changed against because of claim construction rulings or expert witness input, or maybe there is a new prior art reference for a combination. Yet another set of changes and more time devoted to a new theory further increases the time spent editing charts, not refining invalidity theories.
With PatDek, each change is made once and the change is applied to every applicable instance. Changing charts is no longer a time-consuming problem.
That was the thought process we followed. Why not make our jobs easier and just analyze references, then let a computer put charts together for us once the analysis is underway? This seemed straightforward, or so we thought back in 2001. Flash forward a decade and we're getting there, and we learned a lot along the way.
What if you could spend more time analyzing prior art references, and then generate your invalidity charts using this interface?
This is just one exemplary interface that helps you in generating invalidity contentions. Our software is not just about the invalidity contention stage. Rather, it represents a new way of organizing the information you'll use and rely on throughout a case. The goal of the software is provide a 360 degree view of your invalidity defenses as the case moves forward. The output is one thing - command over and organization of your data is another. Leverage our software innovations to gain important perspectives on your defenses.
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