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April 11, 2011

Building an Invalidity Position

Most patents are junk. But proving that to a judge or jury is no easy task. The more technical the claimed invention, the more difficult it can be to convey the mapping between prior disclosures and patent claims to one of less than skill in the art. Prior art search is the first step to developing an invalidity position, and a most important step. But prior art search is best viewed as a cog used to build an invalidity steamroller. Fitting the parts together isn't always as simple as it may seem.

Invalidating claims necessarily depends upon claim construction. Invalidity and non-infringement hang off the opposite ends of claim construction. A broader construction typically eases invalidity while making non-infringement more problematic. A narrow construction puts a pothole in the road to invalidity, while improving the drive to non-infringement.

Court dockets put the cart before the horse, in commonly requiring production of prior art that makes for invalidity contentions prior to the claim construction hearing. While claim construction is typically the first hearing, it is not the first production requirement. This is a judicial oversight. Given its lynchpin importance, upon which all else hinges, claim construction should be the first task. Instead, some judges don't bother with claim construction until trial. The Northern District of California developed a schedule for patent cases that has been widely imitated in other districts. Unfortunately, that schedule puts claim construction much later in the process than it should be. Texas judges often tend to broad constructions, taking the claims at face value, which is one reason why patent holders like Texas.

Litigators often hire prior art searchers, like Patent Hawk, specialists in ferreting prior art, to take point on the archeological dig. The rubber meets the road for prior art search quality in precision, care, and work product. The nominal practice by prior art searchers is to "throw it over the wall" - simply email a copy of the reference to the client firm. Providing a written summary beyond quotes is problematic, because it's necessarily second-hand, and because facilely characterizing the prior art can become a weapon for the patent holder if the email happens to come out during discovery. Although nominally covered under work product, it is not unheard of that prior art search result emails from a third-party firm are discovered.

Best practice for providing prior art search results is the Patent Hawk way. Patent Hawk provides emails of relevant found references, with a summary digest version of each reference by pulling salient quotes from the reference, and underlining particularly relevant passages. Different topics are labeled, but the reference is in no way characterized. A single download page is provided for a matter. That provides a one-stop shop for anyone involved at the law firm, from clerks preparing discovery production, on up, to access the prior art.

Patent Hawk seeks coverage: finding prior art to cover all claimed elements. Patent Hawk calls off a search upon reaching the point of diminishing returns, regardless of budget. The Patent Hawk business model follows the golden rule of relationships: do for others what you'd want done for you if the the tables were turned. Patent Hawk sincerely looks to its client's best interests. Quality results matter. The money takes care of itself.

The search results are then used to prepare invalidity charts, which map each claim element to the prior art reference. These charts become part of an appendix to an invalidity memo covering the high points of how the claim was anticipated or obvious in light of the prior art. The memo is backing to a motion to invalidate the patent under 35 U.S.C. §102 or §103.

§102 allows a patent claim unless it was explicitly or inherently disclosed every claimed limitation. §102 invalidity is by prior art anticipation.

Under 35 U.S.C. § 102 a claim is anticipated "if each and every limitation is found either expressly or inherently in a single prior art reference." Celeritas Techs. Ltd. v. Rockwell Int'l Corp., 150 F.3d 1354, 1360 (Fed. Cir. 1998). "[A]nticipation by inherent disclosure is appropriate only when the reference discloses prior art that must necessarily include the unstated limitation. . . ." Transclean Corp. v. Bridgewood Servs., Inc., 290 F.3d 1364, 1373 (Fed. Cir. 2002). King Pharmaceuticals v. Eon Labs v. Elan Pharmaceuticals, 616 F.3d 1267, 1274 (Fed. Cir., 2010).

Although § 102 refers to "the invention" generally, the anticipation inquiry proceeds on a claim-by-claim basis. See Hakim v. Cannon Avent Group, PLC, 479 F.3d 1313, 1319 (Fed. Cir. 2007). Orion Ip LLC v. Hyundai Motor Am., 605 F.3d 967, 974 (Fed. Cir., 2010).

"To anticipate a claim, a single prior art reference must expressly or inherently disclose each claim limitation . . . . But disclosure of each element is not quite enough-this court has long held that '[a]nticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.'" Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1334-35 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542,1548 (Fed. Cir. 1983)). Moreover, inherent anticipation requires more than mere probabilistic inherency, see Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991), and more than the presence of an unrecognized de minimis quantity of claimed substance in the prior art. See In re Seaborg, 328 F.2d 996 (CCPA 1964). But these cases "do not show that inherency requires recognition" of the inherent element. See Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1377 (Fed. Cir. 2003). Crown Packaging Technology v. Ball Metal Beverage Container, CAFC 2010-1020, slip op at 18-19 (Fed. Cir., 2011).

If a claim is not anticipated, it may be obvious in light of the prior art. §103 allows a patent claim unless "the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains."

A court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions. The analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ. KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 167 L.Ed.2d 705, 550 U.S. 398 (2007).

Finesse in prior art search comes in considering the quality of "story art." Great story art maps to claim elements with little to no description of context. The prior art literally reads on the claim elements, itself telling the story.

It is not uncommon, particularly for technically intricate art areas, to find apt technical art that is lousy story art. For the technically savvy, the prior art discloses the claimed invention, but the mapping is as clear as mud, typically because the disclosure requires explanation to the point of translation for a judge or jury to appreciate. The more story that needs to be told to explain a prior art reference, the worse it is as story art. Lack of clarity provides openings for the other side to prevail by obfuscation. For getting to invalidity, technically second-rate good story art can trump on-point but poor story art.

Building the strongest invalidity position can be an interlaced task. Unfortunately, invalidity is seldom approached holistically when an outside firm performs the prior art search, and the litigation firm charts the results. Widespread practice is to skimp on prior art search via a limited budget, with the results handed off to law firm associates who later chart. For simple cases, that works fine. For cases where the position is dicey, the business-as-usual prior art search approach can miss the boat.

Best practice is to holistically build an invalidity position: search, chart, then search more if necessary to fill any gaps. Patent Hawk has the skill to prepare stellar charts from search results, and can even draft the relevant portions of the invalidity memo, including on-point case law citation.

Patent Hawk can also prepare reexamination requests, a route to foil further assertion, and possibly get a case stayed. The early a reexam request is filed, the more likely that a court will grant a stay.

Spending more up-front to develop convincing invalidity charts is very little to pay for something that has such tremendous benefit in reducing the cost of litigation. The alternative can easily cost millions.

Posted by Patent Hawk at April 11, 2011 6:15 PM | Prior Art