Series: a deeper look at local patent rules and invalidity contentions (NDNY)

Today we'll take a look at the local patent rules for the Northern District of New York, specifically obviousness contentions.  You can find an index of local patent rules here if you want to browse rules in different jurisdictions. The Northern District of New York specifies the following for invalidity charts and invalidity contentions relying on obviousness challenges:

L. Pat. R. 3.3(b)(2) provides:

(2) Whether each item of prior art anticipates each asserted claim or renders it obvious. If obviousness is alleged, an explanation of why the prior art renders the asserted claim obvious, including an identification of any combinations of prior art showing obviousness, the reason why one of ordinary skill in the art would have combined the references at the time of the invention in issue in the case, and identification of what the accused considers to be the primary reference.

L. Pat. R. 3.3(b)(3) provides:

(3) A chart identifying where specifically in each alleged item of prior art each limitation or view of each asserted claim is found, and for utility patents, including for each limitation that such party contends is governed by 35 U.S.C. § 112 ¶ 6, the identity of the structure(s), act(s), or material(s) in each item of prior art that performs the claimed function;

{C}Unlike most local patent rules, the NDNY requires an "identification of what the accused considers to be the primary reference."  NDNY L. Pat. R. 3-3(b)(2).  Not only does a defendant need to identify "any combinations" to show obviousness, but the primary reference needs to be identified.  Most jurisdictions merely require an identification of obviousness combinations, but not the primary reference.  In this Series on local patent rules, we'll address other nuances in jurisdictions for your consideration.

Let us know if you're aware of other differences of interest.

How to break down patent claims with PatDek

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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.

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concepts representing multiple patent claims

linking patent claims to concepts

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.

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linking multiple patent claims to prior art using concepts

Local patent rules by jurisdiction

We recently completed an update to our list of local patent rules.  You can now find a list of each jurisdiction that provides patent local rules, a corresponding link to the patent rules or PDF, and excerpts of the specific rules concerning invalidity contentions and invalidity charts. Take a look and let us know what you think.  We still need to add a couple of additional jurisdictions.

PatDek handles newly asserted patent claims

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?

District Court decisions about invalidity contentions

We continue to update our collection of district court decisions addressing invalidity contentions.  The decisions include issues about supplementing contentions, motions to strike contentions, motions to amend contentions and late disclosure of contentions. We've now arranged the decisions by year of decision and jurisdiction.  With future updates to our case repository plug-in, we hope to provide a summary of the issues decided in each decision.

The decisions can be found here, or via links in the right hand side bar.

We are alerted to these decisions via daily email via an excellent case reporting service - DocketNavigator - this patent-related service reports on newly filed cases, verdict awards, claim construction terms and recent district court decisions.  We have no affiliation with DocketNavigator, although we highly recommend the service.

Court decisions addressing invalidity contentions from 2008-2011

We have now posted links to over 50 district court decisions addressing supplementing invalidity contentions, motions to strike invalidity contentions, motions to amend invalidity contentions under local rules, late disclosure of invalidity contentions, and other nuances involving invalidity contentions (invalidity charts, section 103 contentions, differences between contentions and expert disclosures). In the near future these cases will be arranged into various categories.  For now, each decision is identified by Judge, year of decision, and litigants.

The decisions can be found here.

"New" obviousness combinations excluded in ED Texas

This August 10 decision by Judge Folsom addresses Plaintiff's motion to strike "twenty eight new combinations of prior art" relied upon by Defendants.  Plaintiff argues that the combinations were not disclosed earlier as required by the Eastern District of Texas local patent rules, but admits that the underlying references were identified and charted as part of the Defendants' local rules contentions.

Defendants contended that:

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The Court analyzed Defendants' argument under the non-exhaustive, five-factor test and determined that supplementation was not warranted.  In particular, the Court noted that:

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The Court noted that local rule P.R. 3-3(b) requires a disclosure of the combinations that render a claim obvious.  Even though the prior art references were previously disclosed, the particular combinations were not disclosed.  The Defendants could have avoided this issue had the combinations been disclosed in its preliminary invalidity contentions.  For some reason, the combinations were not set forth even though each reference was included in a limitation-by-limitation claim chart in the contentions.  As discussed previously, PatDek provides all reasonable prior art combinations for use in preliminary invalidity contentions.  The Defendants did analyze the prior art, the specific combinations now relied upon were just not disclosed.

The Court rejected the balance of Defendants' other arguments.

We designed PatDek to specifically handle a substantial number of prior art references and to identify all prior art combinations (two or three-way combinations) that teach all elements of each target claim.  At the early stages of litigation, it is very difficult to know the specific combinations that will be important later in the litigation.  Because the local rules require an identification of relied upon combinations at this early stage, we designed PatDek to perform this analysis for you.

The PatDek license fee for an entire case is likely to be significantly less than the cost of motion practice directed to excluding your invalidity contentions.  Beyond the cost savings, you'll have all of your prior art organized to allow for changes to be made as the case evolves toward the expert and summary judgment phases.  Let us know if you would like access to PatDek for a 15 day, no-cost demonstration.

More about joint defense group invalidity contentions

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:

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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.

Invalidity contentions - how much of a reference to quote in invalidity charts?

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?

700 pages of invalidity contentions are not "too voluminous"

Some people have inquired whether invalidity contentions can be too excessive based on page count alone.  In other words, if technology can generate invalidity contentions, including invalidity charts, won't a Court strike contentions that may appear to be overboard based on the total number of pages? Other than the rules in a jurisdiction and relevant case law, there does not seem to be clear guidance as to specific page counts.  If you can justify that the contention rules have been satisfied and that all the pertinent information that may be relied upon in the future is disclosed, a patent owner's arguments may ring hollow about your contentions if the only argument is based on page count.

In Tyco Healthcare v. E-Z EM Inc invalidity contentions order, Judge Ward (E.D. Tex 2010) explained:

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Excerpt from Tyco Health invalidity contentions decision

In other words, the 700 pages of invalidity contentions in Tyco were not the issue.  As long as a defendant provides meaningful information supporting its contentions, such as detailed charts with citations and an identification of how the claims are met by the references, a Court is not likely to disturb those contentions.  In contrast, the defendants in Saffran seemingly failed to provide the requisite notice of their invalidity contentions leading to the opposite conclusion.

Technology now allows you to include more pertinent information that is directly relevant to your contentions.  Instead of taking the Saffran approach, you should consider following the approach of E-Z-EM, Inc. and leverage the appropriate tools to efficiently manage your contentions.

Real-time viewing of analysis progress

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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.

Why we created PatDek

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.

How to create invalidity charts for invalidity contentions

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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.

Introducing PatDek

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Prior Art Reference List

Do you organize your prior art like this?

Stay tuned to find out how you can.

We offer affordable, budget-conscious plans to use this software in your cases.  You'll be surprised at how our system can enhance your analysis and save you time in preparing your invalidity contentions and organizing your defenses.  We developed this system to help us on cases and you can now benefit from our experiences.  Give us a chance to explain the benefits to you and your clients of a revised litigation workflow.  Invalidity charts are just one feature of this software platform.