More than 3,000 days ago, this presentation was made about how to organize prior art for patent litigation.
Lithosphere is not alone in talking about applying technology to improve legal processes. From the blog below, there's even a class at Georgetown Law School called "Technology, Innovation and Law Practice." The blog observes that:
The technology is available now to improve some of the functions that lawyers typically perform.
from 3 Geeks and a Law Blog: The Next Generation of Computers Practicing Law. Niki Black of MyCase also explains that
I truly believe that over the next few years, lawyers who embrace and utilize technology effectively–in particular Internet-based and mobile tools–will undoubtedly have an edge over their less tech-savvy colleagues.
Our belief is that by replacing a typical patent lawyer function (manually organizing/analyzing patent claims and prior art in a folder structure) with new technology-based tools (database environment providing an edge over standard patent claim chart analysis), a lawyer can have a better grasp on the analysis. A deeper understanding of the more subtle issues can then be achieved.
We focus on developing tools that enhance the understanding of the boundaries of patent protection. The tools can be applied to infringement and invalidity analysis, but the underlying principles are the same - what is the proper scope of the claims. If the claims are too broad based on the prior art, then a challenge can be made. Does the claim scope really reach an accused product or service? All of this is shaped by the prosecution history of the patent, prior art considered during prosecution, any stated reasons for allowance, and prior art not considered during prosecution. This is a lot of information to track, process and understand.
Give us a call and see how we can help you in your practice.
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.
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?
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.
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?
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.