Court orders reduction of claims and prior art contentions

Consider how you might handle this situation - a court order to consolidate your invalidity defense from 120 prior art references down to 8.  Although you wouldn't necessarily need to create all new charts, you probably would carefully consider how one set of references applied to the the reduced set of claims, better than another, when making that decision. This is what is unfolding in a widely watched litigation between Oracle and Google.  Groklaw has posted the Court's order and some commentary.  Below is a snipped summary of that order from The Inquirer:

Oracle submitted a total of 132 claims in seven patents and court documents reveal that Google identified "hundreds of prior art references". But US District Judge William Alsup said, "This is too much."

The narrowing of claims down to just three will be made in stages set out by Judge Alsup. The judge said that within seven days of the finalised claim construction Oracle will have to narrow its patent infringement case to 40 asserted claims. A further seven days after that, Google will have to narrow its case arguing patent invalidity to 120 prior art references. Judge Alsup said that this first stage should be completed by the end of May.

via Oracle has to toss 129 patent infringement claims in google lawsuit- The Inquirer.

In the end after the staged reductions, Oracle ends up with 3 asserted claims with Google limited to 8 prior art contentions. There are certainly a lot of variables to consider in this weeding-out process.

When I first learned of the decision and considered its impact, I thought about what changes could be made to PatDek to handle this very scenario.  Sure PatDek could help in deciding how to eliminate references for claims that were dropped, but how do you (or software) make a decisions about what reference or combinations of references is best against a claim.  This process appears to be a lot more subtle than just choosing between A or B.  How could this be accomplished when you have 15 strong candidates that need to be narrowed down to 8?  What makes one choice better than another when it's a close call between references?  How does Oracle approach this decision when deciding between very similar claims?

I'm going to need to think about the iterative decision process a little more to consider how an objective ranking criteria might apply.  Look for a post on this topic later or drop me a comment to start a discussion.

CAND decision re disclose prior art references in your invalidity contentions

PatDek also tracks document production information to ensure that the prior art is not only disclosed in contentions, but also produced as part of discovery.  Brilliant Instruments (see here and here) is a cautionary tale to seek permission before including undisclosed invalidity contentions in an expert report.

it is extremely important to disclose each and every prior art reference in the Invalidity Contentions, or otherwise you cannot use them to establish invalidity.  In Brilliant Instruments, Inc. v. GuideTech, Inc., 4-09-cv-05517 (CAND), District Court Judge Claudia Wilken granted Defendant’s motion to strike prior art references from plaintiff’s expert report that were not include in plaintiff’s invalidity contentions.

via It’s sooooo~ important to disclose each and every prior art reference in your Invalidity Contentions.

The administration portal allows you to define a Bates No. for your case.  In the event that the prior art was produced under a different Bates No. scheme from your case, there is also an alternative Bates No. field to cover those situations.  The Bates Nos. also appear in a list identifying all prior art considered in the case.  This is yet a further verification step to confirm that the prior art was analyzed and produced during the preliminary invalidity contentions stage of the case.

from Patent Prospector: Building an Invalidity Position

PatDek can help identify the gaps and holes in your invalidity analysis.  Consider this best practice suggestion from Patent Hawk, a well-regarded prior art searcher, and consider how PatDek can enhance your analysis.

Best practice is to holistically build an invalidity position: search, chart, then search more if necessary to fill any gaps.

via Patent Prospector: Building an Invalidity Position.

If gaps exist in the prior art, how can you learn where those gaps are?  If a new search is undertaken, how do you integrate the new search results into your case?  We can help you with these problems.  Because the prior art set evolves during a case, you should consider a flexible management system to handle the defense aspects of your case.  We welcome the opportunity to help you with your case.  Just ask.

Invalidity contentions - what e-discovery can teach us

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."

via Strategic Legal Technology :: The State of BigLaw: What the AmLaw 100 2011 and Two Other Reports Today Tell Us.

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.

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.

Challenges of early stage invalidity analysis

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.

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.