More than 3,000 days ago, this presentation was made about how to organize prior art for patent litigation.
The Model Order benefits a patent owner more than a defendant. Patent owners maintain an advantage by waiting to just before trial to identify claims to a defendant. The Model Order does speed up this identification to the benefit of the defendant. But the tradeoff for limiting claims under the Model Order is a drastic reduction in prior art references available to a defendant.
Following up on our earlier post, below is a quick illustration to show you how PatDek organizes claim concepts and uses the concepts to analyze prior art for invalidity contentions.
As you can see, the concepts are defined using the Administration interface (left) and then used to analyze prior art references (right, top and bottom). In this way, the Administration interface establishes the concept for a case to be considered by a user when analyzing prior art references for a case.
Here is a pictorial of the process that describes how to understand the idea of "concepts" as they relate to patent claims and prior art. The main idea, as shown in the graphic below, is that patent claims can be represented concepts. We utilize this process because patent claims often use the same or similar words to cover a particular feature.
As above, the color-highlighting generally indicates features recited in the claim language. The different colors represent different features recited in the claim. The user determines how a claim can be divided into different concepts. In the next graphic, we show a group of concepts. Once concepts are identified for one claim, the same concepts can be used for other claims.
As below, three claims can be represented by seven concepts. Because certain concepts are repeated (as indicated by arrows), they are reused in different claims.
linking patent claims to concepts
In a final graphic (below), the concepts are shown to link the patent claims and the prior art. By analyzing the prior art using concepts, the user does not need to repeatedly refer back to the claim language. The concepts, not claim language, are used to analyze the prior art (another post on claim concepts here). At this level of prior art review, different teachings of the references can be matched up together. These mashups of the references form patent claim charts and invalidity contentions. Using the PatDek interface, different prior art mixes can now be generated by the user.
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?
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.
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."
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:
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.
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.
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:
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.
Here's a snapshot showing how a case-specific database can be configured to track features for claim limitations. Instead of looking at each claim, the database can be configured to look at specific aspects of a claim. This allows a review team to extract features from a prior art reference during the analysis phase, and also allows changes to be made for a reference, later when needed, directed to only portions of claim.
This approach may seem non-traditional. We believe that this approach provides a solid foundation for the case team as the litigation advances from preliminary assessment, through preliminary contentions, onto fact discovery/contentions, and then as it moves to expert discovery and dispositive motions. The case is continually focused through the use of a database and changes to the data set. We can help you understand this revised work flow. Hopefully you'll consider how these different ideas can assist you when preparing your claim. You can view your evolving understanding of the target claims in different ways - claim limitation mapping is just one alternative.
Would this Progress Table help you better understand how the prior art review process is evolving? Do your invalidity charts give you this type of information?
This is just one of many ways to help you better understand the claims of your case and scrutinize how the prior reads on the recited claim features. In-house counsel can benefit from this viewpoint as it helps discuss where the review process is and where it is heading. This is the type of information that can be relied on beyond the static invalidity charts. Litigation is about framing the issues. Software can help with that process.
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.
Do you organize your prior art like this?
Stay tuned to find out how you can.
We offer affordable, budget-conscious plans to use this software in your cases. You'll be surprised at how our system can enhance your analysis and save you time in preparing your invalidity contentions and organizing your defenses. We developed this system to help us on cases and you can now benefit from our experiences. Give us a chance to explain the benefits to you and your clients of a revised litigation workflow. Invalidity charts are just one feature of this software platform.