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preliminary contentions

Federal Circuit Advisory Council Model Order Limiting Excess Patent Claims and Prior Art

Federal Circuit Advisory Council Model Order Limiting Excess Patent Claims and Prior Art

The Federal Circuit Advisory Council released a Mole Order for limiting the number of patent claims and prior art references. The Model Order "is offered to aid trial courts in the exercise of their discretion in crafting orders tailored to the facts and circumstances of each case."  

Series: a deeper look at local patent rules and invalidity contentions (obviousness)

Today we'll take a look at the local patent rules across jurisdictions and the specificity required for obviousness contentions.  You can find an index of local patent rules here if you want to browse rules in different jurisdictions. Certain jurisdictions, like the Eastern District of Texas shown below, specify the following for  invalidity contentions relying on obviousness challenges.

L. Pat. R. 3-3(b) provides:

(b) Whether each item of prior art anticipates each asserted claim or renders it obvious. If a combination of items of prior art makes a claim obvious, each such combination, and the motivation to combine such items, must be identified;

Other jurisdictions, like the Northern District of California, do not recite the requirement to identify the motivation to combine prior art references when obviousness contentions are based on a combination of prior art.

L. Pat. R. 3-3(b) provides:

(b) Whether each item of prior art anticipates each asserted claim or renders it obvious. If obviousness is alleged, an explanation of why the prior art renders the asserted claim obvious, including an identification of any combinations of prior art showing obviousness;

In summary, certain jurisdictions specifically require a motivation to combine identification, while others do not.  We have summarized a list of the jurisdictions that include and do not include this requirement.  Certainly, for a given jurisdiction, Court decisions may indicate that motivations to combine must be included for obviousness-based contentions, even if not specifically recited in the local patent rules.

The following ten (10) jurisdictions recite that a motivation to combine prior art must be identified:  Northern District of Georgia; Northern District of Illinois; Eastern District of North Carolina; Western District of North Carolina; District of New Hampshire; Northern District of New York; Western District of Pennsylvania; Eastern District of Texas; Northern District of Texas; and District of Utah (J. Campbell).

The following thirteen (13) jurisdictions do not recite that a motivation to combine prior art must be identified:  Northern District of California; Southern District of California; District of Idaho; District of Maryland; Eastern District of Missouri; District of New Jersey; District of Nevada; Northern District of Ohio; Southern District of Ohio; Western District of Tennessee; Southern District of Texas; Eastern District of Washington; and Western District of Washington.

Let us know if you're aware of other differences of interest.

Series: a deeper look at local patent rules and invalidity contentions (NDNY)

Today we'll take a look at the local patent rules for the Northern District of New York, specifically obviousness contentions.  You can find an index of local patent rules here if you want to browse rules in different jurisdictions. The Northern District of New York specifies the following for invalidity charts and invalidity contentions relying on obviousness challenges:

L. Pat. R. 3.3(b)(2) provides:

(2) Whether each item of prior art anticipates each asserted claim or renders it obvious. If obviousness is alleged, an explanation of why the prior art renders the asserted claim obvious, including an identification of any combinations of prior art showing obviousness, the reason why one of ordinary skill in the art would have combined the references at the time of the invention in issue in the case, and identification of what the accused considers to be the primary reference.

L. Pat. R. 3.3(b)(3) provides:

(3) A chart identifying where specifically in each alleged item of prior art each limitation or view of each asserted claim is found, and for utility patents, including for each limitation that such party contends is governed by 35 U.S.C. § 112 ¶ 6, the identity of the structure(s), act(s), or material(s) in each item of prior art that performs the claimed function;

{C}Unlike most local patent rules, the NDNY requires an "identification of what the accused considers to be the primary reference."  NDNY L. Pat. R. 3-3(b)(2).  Not only does a defendant need to identify "any combinations" to show obviousness, but the primary reference needs to be identified.  Most jurisdictions merely require an identification of obviousness combinations, but not the primary reference.  In this Series on local patent rules, we'll address other nuances in jurisdictions for your consideration.

Let us know if you're aware of other differences of interest.

"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:

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:

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.

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:

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.

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:

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.

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.

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

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.

How to create invalidity charts for invalidity contentions

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.