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joint defense

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:

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.

Heat map for broader view of prior art analysis

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.

Crowdsourcing your invalidity contentions and prior art searches

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.

Specificity for section 103 combinations

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.