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joint defendants

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.

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.