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.
