Court declines to limit the number of invalidity references ... for now

In Gen-Probe Incorporated v. Becton Dickinson And Company (February 22, 2012), Judge Benitez (Southern District of California) declined plaintiff's suggestion to limit the number of invalidity references applied against the asserted claims.  Plaintiff Gen-Probe reasoned that if it is required to limit the asserted claims:

it should be required to limit its claims only after the Final Invalidity Contentions are served.  In the alternative, Gen-Probe suggests the Court require it to limit its claims to sixty at this time, and further require it to limit the number to thirty after [Defendant] BD's Final Invalidity Contentions are served.  If the Court accepts this suggestion, Gen-Probe also seeks an order requiring BD to limit its Final Invalidity Contentions to no more than one anticipatory reference and one obviousness combination consisting of three or fewer references per asserted claim.

Order at 3.  The Court ultimately ordered Gen-Probe to limit its asserted claims to no more than 30 claims, and further ordered BD to serve Final Invalidity Contentions against the reduced set of 30 claims. The Court also provided a mechanism for Gen-Probe to assert additional claims beyond the set of 30 claims, and left open the issue for Gen-Probe to seek limitations on the number of references that could be asserted against the reduced claim set.  This last issue - limiting the number of prior art references - seems to be gaining traction.

Patent owners faced with limiting asserted claims are now trying to turn the tables on defendants by seeking to link a reduction in the number of asserted claims with a corresponding limit on the number of applied prior art references.  We've now seen this strategy in at least two other cases.  In an earlier post, we noted that Judge Folsom limited the number of Defendants' prior art references (limit of 18) that could be maintained against the Plaintiff's reduced set of claims.  We also saw a tiered prior art reduction procedure established in Oracle v. Google.

If this trend continues, certain factors should be considered before establishing an arbitrary limit on prior art references.

First let's consider whether any efficiency is gained by limiting the number of asserted claims.  Then let's consider whether the same concepts hold true when limiting the number of prior art references.  When limiting asserted claims, an efficiency is gained in that the number of claim construction issues/terms/disputes is likely to be lower with a smaller set of claims.  A further benefit is that less analysis is required by lawyers and experts for at least infringement, non-infringement, invalidity and validity grounds because of the claim number reduction.

What are the benefits to limiting the number of prior art references?  When compared with limiting asserted claims, generally speaking, a limit on the number of prior art references has little impact on reducing claim construction issues.  Further, the number of prior art references does not have an impact on infringement/non-infringement issues.  The best that can be said for limiting the number of prior art references is that invalidity/validity expert reports might be reduced in scope with less references.  More importantly for patent owners, though, limits on references would mean less prior art would need to be considered when assessing the relative strength of remaining claims claims or when reducing the set of claims.

We've seen that at least one party, Gen-Probe, tried to secure a large advantage when it proposed that defendant's Final Invalidity Contentions be limited

to no more than one anticipatory reference and one obviousness combination consisting of three or fewer references per asserted claim.

At the very least, any proposed reductions should consider:  (1) the complexity of the claims (number of limitations and length of the claim); (2) what constitutes a reference for counting purposes (do multiple documents about the same prior art product count as multiple references); (3) the breadth of the claims (do the claims read broadly and implicate different technologies across multiple industries rendering more relevant prior art available); and (4) different limits for dependent and independent claims.

More issues to consider:  should limits be linked to the number of asserted claims?  should the limits be in the aggregate or on a claim-by-claim basis?  how to assess the complexity of a claim when imposing limits?  should the reduced number of references be linked as a percentage of the initial number of references applied against the asserted claims?

More as this issue evolves.

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.

EDTX - Judge Folsom limits number of prior art references against asserted claims

In a recent Eastern District of Texas decision on February 14, 2012, Judge Folsom ruled that:

Defendants shall serve Invalidity Contentions that narrow the number of asserted prior art references in their Invalidity Contentions to no more than fifteen (15) individual references (i.e., not groups of references) asserted per claim or no more than eighteen (18) individual references per dependent claim where Plaintiff is also asserting a corresponding claim from which the dependent claim depends.  Defendants may not multiple [sic] the number of claims by fifteen or eighteen and arrive at a gross number of possible references.

While the result of this order might bring cheer to Plaintiffs' counsel in E.D. Tex., the order references an agreement memorialized in the Docket Control Order whereby "the parties had previously agreed that Defendants would narrow the number of asserted prior art references."  We're still reviewing the briefs (Plaintiff's Motion, Defendants' Opposition, Plaintiff's Reply) on this motion, but it appears that the Plaintiff agreed to limit the number of asserted claims in exchange for an agreement that the Defendants would consider limits on the number of relied upon prior art references.

Click the link to read the decision in MicroUnity Systems Engineering, Inc. v. Apple, Inc. et al.

Understanding claims using claim segments

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?

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.

Google stoking the patent crowdsourcing fire

The patent "crowdsourcing" topic, although addressed before, appears to be gaining some momentum.  We know that Peer-to-Patent offers access to its website to spur the patent crowdsourcing initiative.  As suggested by Peer-to-Patent, Eric Schmidt, and others, crowdsourcing the patent review process may help the PTO avoid issuing broad patent claims. One problem still remains - how to apply crowdsourcing to the patent landscape whether at the PTO, for litigation, or in reexamination.

For example, Article One Partners is in the process of applying crowdsourcing to prior art search.  Peer-to-Patent applies crowdsourcing to prior art selection, with small doses directed towards analysis.  Prior art analysis, or tools to aid in analyzing the prior art specifically against claims, remain in the background of these efforts.  For crowdsourcing the actual prior art analysis, there's not much out there.

Although Lithosphere Software offers a set of patent tools directed to prior art analysis linked to patent claims, these tools are primarily designed for patent litigation to create invalidity contentions and invalidity charts.  Schmidt's suggestion below is a good one, but very labor intensive, and still is not directed at how to organize the analysis.

Schmidt suggested that the real problem with the current patent landscape in the U.S. has longstanding causes; in the early ’90s and early 2000s, he said, there were a lot of patents issued that “were very broad”, and that patent clerks are now spending a lot of time combing through and invalidating these older patents. The best way to address this problem, he said, is to take the patents as they’re published and crowdsource them. The best way to potentially curb these patent wars, then, would be to publish the patents publicly and allow “everyone to comment to see if there’s any prior art”, he said.

via Google Chairman Eric Schmidt Weighs In On Patent Issues: They’re ‘Terrible’ | TechCrunch.

We have considered how to extend our patent tools, possibly simplify them, to make them more appropriate to non-patent lawyers.  The gap in crowdsourcing patent and prior art analysis right now is how to allow "everyone to comment to see if there's any prior art."  Once prior art is identified, the next logical step is matching the prior art to the claim language.

Once you check out Lithosphere Software's platform, let us know how you think we could simplify our platform to improve it for use by the general public to achieve that elusive "how."

"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.

Supplementing invalidity contentions - Oracle v. Google

The process to reduce asserted claims and limit invalidity contentions continues in Oracle v. Google.  We discussed the procedure to narrow the case in an earlier post.  In this August 8, 2011 Order, Judge Alsup criticizes Google for its delay in formally seeking to supplement its invalidity contentions.  After disclosing the new theories of invalidity to Oracle during discovery, Google later requested permission to supplement its contentions after Oracle reduced the number of asserted claims from 132 claims down to 50 claims.  The Court rejected this approach:

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Overall, the Court rejected several attempts to add invalidity contentions under different theories based on Google's apparent delay in seeking "permission" to supplement its contentions.  One set of contentions related to prior art appearing in reexamination requests.  Google was, however, successful in supplementing its contentions based on references previously charted as anticipatory, but with the subject matter now reorganized to show obviousness.

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This decision provides some clear guidance - provide charts for references relied on for local rules contentions, and if supplementing, seek permission immediately even if those contentions are disclosed as part of discovery.  Failure to do so promptly may result in exclusion of those contentions.

We've talked now for months in this blog about how PatDek can help you in these exact situations.  The software creates charts for you, identifies your section 102/103 contentions, and keeps track of what has been produced/disclosed.  With litigation stakes increasing each year, why not use our software to make your contentions stronger and better organized when claims invariably change later in the litigation.

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.

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:

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heat map concepts selection

Here is a results screen for the heat map:

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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.

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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.

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?

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.

Four Types of Crowdsourcing - Outside In Marketing by Steve Keifer

I came across a blog post that reviews a book authored by crowdsourcing blogger Jeff Howe.  The blogger, Steve Keifer, summarizes what Howe's book describes as four variants of crowdsourcing:

In the final chapter of the book, Howe describes the four primary types of crowdsourcing – 1) Crowd Wisdom; 2) Crowd Creation; 3) Crowd Voting and 4) Crowd Funding, each of which I have outlined in more detail below.

via Four Types of Crowdsourcing « Outside In Marketing by Steve Keifer.

How can crowdsourcing be applied to patent litigation?  The application of the type of crowdsourcing would likely be dependent on the usefulness of the method to a defendant or plaintiff.

The first two types are probably the most applicable to a defendant.  For  invalidity contentions - "crowd wisdom" fits well as it relates to prior art analysis and "crowd creation" makes sense as it relates to prior art searching.

For "crowd voting" and "crowd funding," each of these may work for both plaintiffs and defendants.  As to defendants, non-related industries could target, via voting, particularly troublesome patents to pursue.  In a reexamination context, crowd funding could enable non-related industries to pool resources for a large scale reexamination effort.  On the plaintiff side, crowd funding could be used as a mechanism to fund large scale infringement pursuits.

In the next post I'll try to explain how we see our software platform positioned in the crowdsourcing space, particularly in the prior art analysis context.

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.

Some thoughts on preparing more effective invalidity contentions

Let's set a basic premise.  This is being written in very general terms.  The approach can differ based on the subject matter of the patent(s) under review.  The subject matter of the patent often dictates the form of analysis undertaken.  For example, at the most basic level, mechanical-based patents often focus on structural improvements that function more effectively; software-based patents often relate to efficiency improvements introduced through some novel logic or process; and chemical patents often highlight new material properties or unexpected applications. The trick is often to quickly identify the one or two specific features that are not readily apparent in the prior art in the relevant time period. The prosecution history may help identify that for you based on the stated reason for allowance. If the prosecution history is not helpful, sometimes the specific feature is easily identified because the claims recite a "new" term of art in the claims. The term may be new, but the feature may be well-known by another name. To locate that feature in the technical field, you'll need to look for variants of the feature in the prior art.

Sometimes the feature is well-known, but is not well-discussed along with other concepts recited in the claims. In that situation, the focus usually revolves around seeking information about the feature in different contexts to find the contexts that best match the other recited concepts in claims.

There are other searching techniques used. The main point is the need to identify the specific feature(s) that will be critical for the invalidity analysis. Once that is accomplished, you can catalog prior art that reaches all recited concepts in the claims, along with the specific feature.  The difficultly often lies in figuring out what the state of the art is in a certain time period, what features were discussed in combination with each other, and how different features were described to solve specific problems.

Some might argue that this cuts close to hindsight-based review.  I would disagree because until you know the state of the art, who the players were, and what the industry focus was, you can't tell an effective story.  We decided to use software to arrange the story elements much like a screen writer uses software to keep track of characters, settings and plot lines.  In the end, this is all about the story you are telling.  Your first cut at your invalidity contentions lays out all possible story paths.  As you move towards summary judgment and expert reports the story is refined.

The problem we see in Court decisions is that some of the possible story paths may be discarded if you don't disclose them early enough in the case.  We've created a system that not only helps preserve all possible story paths, it can also help you craft the most effective story while you prepare for trial.  We offer a 15 day trial to see how this system performs.  Let us know if you're interested in a new approach.

Revisiting an EDTX decision to strike invalidity contentions

In Anascape v. Microsoft et al., the Court ruled in favor of Anascape and struck various prior art references from the Defendants' expert reports. This decision is instructive for several reasons.  First, the Court considered the Magellan reference (discloses a type of game controller).  The excluded the Magellan reference on the ground that

The invalidity contention lists the Magellan reference in a chart, but fails to explain specifically where each element of each asserted claim is found in the Magellan controller. ... The controller is simply named among a long list of other references.

This meager attempt at a disclosure does not harmonize with the local patent rules.

Anascape at 6.

Second, the Court considered whether a generic term used to identify references sufficiently identifies several prior art references. The Court's analysis is below.

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Excerpt from Tyco Health invalidity contentions decision

Finally, the Court denied Defendants' motion to amend their invalidity contentions to include magazine publications describing Sony game controllers.  The Court declined the proposed supplement determining that the

parties with the vast combined resources of Defendants could have located them with relatively little effort.  

Anascape at 8.

This case, although several years old, demonstrates that the Courts are looking for specificity and precision for invalidity contentions, even when those contentions are served at the early stages of a litigation.  Managing your contentions, even without a thorough vetting of their full scope, is paramount to an effective, litigation defense strategy.

In current litigations there are too many asserted claims and too many prior art references to keep track of, especially when the contention disclosures are required to be made early.  Technology can help with this process.  Feel free to compare our approach with others to see what works best for your project or case.

CAND - Court grants Summary Judgment Motion as to 48 undisclosed prior art references

  In a lengthy opinion addressing an extensive set of issues on summary judgment, Judge Spero grants summary judgment for plaintiff Volterra of "no invalidity" based on 48 undisclosed prior art references in Volterra Semiconductor v. Primerion.

As to the 48 undisclosed prior art references, the defendant argued that plaintiff was on notice of some of this prior art during discovery:

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Volterra excerpt - prior art was disclosed (p. 10)

Defendant also argued that some of the prior art, although not disclosed in its local rules invalidity contentions, provides specific information about the knowledge of a person of ordinary skill in the art.  The Court reasoned that if this art "framed" their obviousness contentions, it should have been disclosed more timely as part of their local rules invalidity contentions.

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Volterra - knowledge of person of skill in the art (p. 122)

After rejecting defendant's rationales for not disclosing the prior art during the time specified for local rules contentions, the Court considered whether the local rules contentions could be amended to include the prior art as rebuttal evidence.  The Court declined this justification as good cause as well because, other than conclusory statements that the prior art was rebuttal evidence, there was no link between the prior art and the contentions being rebutted.

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Volterra - new prior art as rebuttal (p. 123)

Increased scrutiny by Courts for parties supplementing invalidity contentions

  Two recent District Court decisions (D. Mass. and E.D. Tex.) highlight the increased difficulty faced by defendants when seeking to supplement invalidity contentions. In one decision, Canrig Drilling v. Omron, Judge Davis (E.D. Tex.) denied defendant's request to supplement its invalidity contentions because the "delay" in presenting the items was not explained.

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Canrig excerpt

In another decision, Abbott v. Centocor, Judge Saylor (D. Mass) denied defendant's request to supplement its invalidity contentions "to account" for the Court's claim construction order because the reasons for changes were not articulated.  The Court reasoned that:

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Centocor excerpt

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.