We recently completed an update to our list of local patent rules. You can now find a list of each jurisdiction that provides patent local rules, a corresponding link to the patent rules or PDF, and excerpts of the specific rules concerning invalidity contentions and invalidity charts. Take a look and let us know what you think. We still need to add a couple of additional jurisdictions.
Different claim construction does not warrant invalidity contention supplement
In Patent Harbor, LLC v. Audiovox Corp., et al. (March 30, 2012), Judge Love (Eastern District of Texas) granted-in-part and denied-in-part Defendants' motion to supplement their invalidity contentions as to three prior art references. Defendants were permitted to supplement their invalidity contentions as to two prior art systems, but were denied their supplement request as to one prior art patent ("Mills patent"). Defendants' requested supplementation to add the Mills patent on two grounds related to a changed claim construction - "good faith" (P.R. 3-6(a)(2)) and for "good cause" (P.R. 3-6(b)).
In denying the requested supplement for the Mills prior art patent under the "good faith" standard of P.R. 3-6(a) on the basis of a changed construction, the Court explained:
[Patent Rule 3-6(a)] is intended to allow a party to respond to an unexpected claim construction by the court. This does not mean that after every claim construction order, new infringement [or invalidity] contentions may be filed. That would destroy the effectiveness of the local rules in balancing the discovery rights and responsibilities of the parties.
Nike, 479 F. Supp. 2d at 667. ... Thus, Defendants must show that the Court’s construction was so different from the parties’ proposed constructions that amending their ICs is necessary.
(Order at 5). The Court reasoned that it essentially adopted plaintiff's proposed construction for the term "content video image", except for replacing the word "visual" with "virtual." Because the claim construction for "content video image" was not so different from the plaintiff's proposed construction, the Court determined that the proposed amended invalidity contention was not warranted.
Next the Court turned to the standard "good cause" factors in evaluating the Mills patent:
- the reason for the delay and whether the party has been diligent;
- the importance of what the court is excluding and the availability of lesser sanctions;
- the danger of unfair prejudice; and
- the availability of a continuance and the potential impact of a delay on judicial proceedings.
(Order at 3) (relying on Cummins-Allison Corp. v. SBM Co., Ltd. (E.D. Tex. Mar. 19, 2009).
Under the "good cause" standard, the Court was unpersuaded that the "publicly available reference" could not have been located sooner. Because defendants did not sufficiently explain why the Mills patent was not included in the preliminary invalidity contentions, the diligence factor weighed against Defendants proposed amendment. The Court further determined that the other factors of importance and prejudice each weighed against the Defendants as well.
For the proposed prior art systems supplements, the Court permitted these proposed supplements, reasoning that
Defendants included some documents regarding these systems in their initial [invalidity contentions] ICs, thus providing Patent Harbor notice of the prior art systems.
(Order at 8). Further, the Court was not persuaded with plaintiff's attempt to show prejudice based on the proposed supplements as to these prior art systems.
Takeaways - this decision seems to follow the normal pattern. Unless there is a strong justification for not locating a prior art patent earlier, Courts seem reluctant to permit such a supplement, absent other nuances. The delay period in locating the prior art and requesting supplementation is often the overriding consideration in assessing diligence.
For the prior art systems, supplementing the contentions to include additional information about these prior art systems seemed to turn on the fact that these weren't newly identified systems, but merely additional documentation about systems identified in the preliminary contentions. This factored into the lack of prejudice to the plaintiff, and diligence was established because the additional information was uncovered during discovery.
Despite four month delay, supplementing invalidity contentions warranted
In Oy Ajat, Ltd. v. Vatech America, Inc. [unpublished] (March 29, 2012), Judge Arpert (District of New Jersey) granted Defendant's motions to stay the case pending reexamination and also to supplement its invalidity contentions based on prior art in the reexamination request. Relying on Patent Local Rule 3-7, Defendant requested a supplement to its prior art disclosures, arguing:
the two new prior art references cited in [its] proposed supplemental contentions became truly material...to the issue of invalidity of the patents-in-suit...[for the first time] on August 23, 2011 when [Plaintiff]...made arguments in [the] reexamination proceedings to avoid invalidity findings by the assigned examiner. [Order at 18]
In a lengthy evaluation of the parties' arguments, the Court considered the prevailing "good cause" factors in evaluating the proposed supplements:
- the reason for the delay and whether a party has been diligent;
- the importance of what is to be excluded;
- the danger of unfair prejudice; and
- the availability of a continuance and the potential impact of a delay on judicial proceedings.
(Order at 36).
The Court ultimately granted the stay, noting that the reexamination had reached ACP (Action Closing Prosecution). With respect to Defendant's supplemental invalidity contentions, the Court explained:
the application itself comes approximately five (5) months after Plaintiff’s submissions to the USPTO, the Court finds that permitting Defendant to serve supplemental Invalidity Contentions at this time will not unduly prejudice Plaintiff given that Defendant presented the USPTO examiner and Plaintiff with the same additional prior art references in September 2011 ..., given that VAK’s recently filed Answer “asserted invalidity of the [patents-in-suit] on all art in the reexamination proceeding including the proposed supplemental prior art” ..., and given the imposition of a stay as set forth above. While noting that the parties may incur additional legal expenses, .... Fact discovery has yet to be completed and, although Markman briefs have been submitted, no hearing has been scheduled such that any additional discovery and/or revisions to Markman briefs may proceed when the stay is lifted. [Order at 40-41]
We earlier commented on a different result where the Court (NDCA) determined that a two month delay in seeking leave to supplement invalidity contentions precluded the request to supplement. In contrast, this New Jersey District Court decision was a bit surprising because there does not seem to be a sufficient justification by the Defendant in requesting a supplement when the relied on prior art was identified in a reexamination request filed months earlier. The Court did not really explain the first "good cause" factor - reason for the delay and diligence, but rather relied on lack of prejudice to the Plaintiff. See Order at 37-41. Defendant's main argument to explain away the delay was that Plaintiff
made arguments in [the] reexamination proceedings to avoid invalidity findings by the assigned examiner. [Order at 18]
This justification seems a bit weak. The art was known at least as of the time of the reexamination filing. Plaintiff's arguments in reexamination don't really explain why the request to supplement was delayed for four to five months. The prior art was either relevant, or it wasn't relevant, despite Plaintiff's reexamination arguments.
Takeaways - this is a bit perplexing. Defendant could have neutralized the delay issue if it would have filed a request to supplement its contentions when it was was drafting the reexamination request, or when it ultimately filed the reexamination request. This seemed to be a close call and the Court's decision is understandable - let the PTO decide the validity issues by imposing a stay. But if the PTO and BPAI are to decide the validity issues, why was it important to allow the supplement when defendant's delay/diligence justification was so thin?
Delays preclude invalidity contention supplements
In Apple v. Samsung (March 27, 2012), Judge Koh (Northern District of California) denied Samsung's request to supplement invalidity contentions. Relying on Patent Local Rule 3-6, the Court noted that for amending prior art disclosures, good cause determination factors in the Northern District of California include:
Nonexhaustive examples of circumstances that may, absent undue prejudice to the non-moving party, support a finding of good cause include: (a) [a] claim construction order by the Court different from that proposed by the party seeking amendment; [or] (b) [r]ecent discovery of material, prior art despite earlier diligent search.
The Court further noted that prejudice only becomes a factor after diligence is first established. Samsung unsuccessfully sought to amend its contentions for five prior art references.
For the Mac OS X 10.0 reference, diligence was not shown because "Samsung admittedly knew about the reference shortly after filing its initial invalidity contentions in October 2011." Order at 3. The Court rejected Samsung's argument that discovery delays by Apple excuse Samsung's delay in seeking an earlier supplement, based on Samsung's "acknowledgement" that it had good cause to supplement two and a half months earlier.
For the SuperClock reference, Samsung provided a proposed supplemental invalidity chart months earlier. Diligence was again lacking because Samsung did not move to supplement the contention until several months after providing the invalidity chart for SuperClock. Order at 5.
For the Glimpse prior art, Samsung admitted that it first became aware of the prior art, months before the requested supplement, during a deposition of an Apple employee. Samsung, however, had difficulty utilizing a function version of the underlying source code. Again the Court focused on the timeline of events, determining that the delay in moving to supplement negated the predicate diligence for the proposed supplement. Order at 6-8.
For the Cirque GlidePoint reference, Samsung provided timely invalidity contentions that incorporated a patent directed to GlidePoint. Samsung then sought discovery from Cirque for additional documentation about GlidePoint. The Court focused on purported delays in seeking additional GlidePoint information through third party discovery, determining that Samsung had not established diligence in pursuing the additional discovery. The Court therefore denied Samsung's request as to GlidePoint. Order at 8-9.
For the Synaptics patent, the Court explained the different ways that Samsung was aware of the Synaptics patent. Because Samsung did not provide an invalidity chart for this patent, the Court again determined Samsung failed to show diligence pursuing contentions involving the Synaptics patent. Samsung relied on discovery issues involving third party discovery of Synaptics, but the Court focused on the requested supplement as to the patent itself, which Samsung was aware of earlier in the discovery period. Order at 9-10.
Takeaways - this is a difficult case to reconcile. It is understandable why Samsung did not seek immediate supplement for some of the prior art. It lacked documentation to provide a compliant proposed supplement in support of its motion. To avoid this problem in the future, it may be advisable to pursue a supplement once a party becomes aware of relevant prior art. In other words, seek to amend contentions even without complete information to support the contentions, and be prepared to aggressively pursue discovery to obtain the missing information. Although the proposed supplements will not necessarily include the actual contentions because of missing information, there will not be a time lag between first knowledge of the prior art and the underlying motion seeking to supplement your contentions, while you pursue the supporting documentation.
Cited prior art was a due diligence factor in denying invalidity contention supplement
In Nomadix, Inc. v. Hewlett-Packard Company et al. (March 22, 2012), Judge Pregerson (Central District of California) denied defendants' request to supplement their invalidity contentions. The Court noted that for amending prior art disclosures, good cause determination factors include:
the relevance of the newly-discovered prior art, whether the request to amend is motivated by gamesmanship, the difficulty of locating the prior art, and whether the opposing party will be prejudiced by the amendment.
(quoting Acco Brands, 2008 WL 2168379, at *1 (N.D. Cal. May 22, 2008)).
The decision appears to suggest that the new prior art (the Vos article) is relevant and that the amendment request is not motivated by gamesmanship. Although these factors may have favored the defendants, the Court seemed troubled that the defendants did not identify the Vos article sooner, noting that:
Defendants fail to adequately explain their delay in discovering the Vos article, when it was one of only eleven references cited in the 1997 SPINACH paper upon which they based their initial invalidity contentions. (p. 7).
As for prejudice to Plaintiff Nomadix, the supplemental contentions extend beyond the Vos article.
Defendants argue that there is no prejudice here, because they are not shifting or adding theories, but simply developing "the same theory set forth in the preliminary invalidity contentions in July 2010 and first supplemental invalidity contentions in July 2011." (Reply at 8.) Specifically, those contentions alleged that the '118 Patent and the SPINACH system rendered invalid Novadix's '894 and '716 Patents, respectively. As Nomadix explains, however, Defendants seek to go well beyond developing these prior art theories. Defendants now contend that the '118 Patent and SPINACH system invalidate several additional Nomadix patents. Likewise, Defendants contend that three other patents are invalidated by a new reference - the Vos article. In short, Defendants now theorize that prior art invalidates seven Nomadix patents, instead of only two. Nomadix therefore reasonably argues that responding to these new contentions would require additional fact discovery, which is now closed.
Takeaways - allege invalidity against all asserted patents for each of your prior art references in your preliminary invalidity contentions, and, be sure to consider references to other prior art in your main prior documents because that may be a factor against you when requesting an invalidity contention supplement.
PatDek handles newly asserted patent claims
Has this happened in your patent litigation practice before? Discovery is ongoing and you're working on finalizing your invalidity contentions against 20-30 claims from 2 patents with your invalidity expert. Your case is well-organized, you've refined your invalidity positions, and selected the most relevant disclosures for your 102 and 103 contentions.
Everything is, for the most part, under control. In litigation though, there's a reason why we expect the unexpected. Suppose now that the plaintiff-patent owner attempts to seize an advantage and asserts 2 more patents against your client adding another 20 claims into the case. If you weren't using PatDek, you would scramble a team of associates to extract portions of your existing invalidity contentions/charts and pull together another 50-60 charts against the newly asserted claims.
If you were using PatDek for your case, the solution is much simpler.
Step one - type in each patent number to add the newly asserted patents to your case.
Step two - link your existing concepts to the new claims of interest for each newly asserted patent.
Step three - select the claims and references you want in your charts.
It really was that simple for one of our clients. In a couple of hours, the client had added in the new patents, linked existing concepts to 20 or so claims, and was generating invalidity charts against those new claims. The new patent claims were closely related to the other claims in the case so no additional concepts were needed, nor was a re-review of the prior art for new concepts necessary. If new concepts were required, the concepts could be added, linked to the relevant claim limitations, and a focused review of the prior art could be done looking just for the new concept(s).
PatDek can adapt to changes in your case. Are you really prepared if you're not using PatDek?
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.
"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.
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:
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.
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:
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:
Here is a results screen for the heat map:
The displayed heat map provides a drill-down link to identify the references for each concept and relationship to claims.
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?
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:
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.
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.
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: