Patent invalidity search for litigation defendants

What an invalidity search is

An invalidity search looks for documents that were publicly available before an asserted patent's critical date and that describe what the patent claims. The output is a set of references (patents, publications, product documentation and other printed matter), each mapped to the elements of the asserted claims with the exact passages that correspond to them.

Unlike a patentability search, which runs before a patent is filed, an invalidity search starts from an issued claim that is already being enforced. The question is narrower and more adversarial: does anything earlier disclose each element of this claim, alone or in combination?

When defendants need one

Defense counsel commonly use prior art at several points in a case. Deadlines vary by court and procedure, and counsel should confirm the ones that apply.

• Early case assessment and settlement. Strong art changes the economics of a demand, especially in assertion campaigns where the same patent is asserted against many companies.
• Invalidity contentions. Many districts with local patent rules require invalidity contentions on a fixed schedule after infringement contentions are served, for example 45 days under Eastern District of Texas Patent Rule 3-3 and Northern District of California Patent L.R. 3-3.
• Inter partes review. A petition for IPR generally must be filed within one year after the petitioner is served with a complaint alleging infringement of the patent (35 U.S.C. § 315(b)). IPR petitions are limited to patents and printed publications.
• Ex parte reexamination. Any person may request reexamination based on patents and printed publications (35 U.S.C. § 302).

The critical date

Prior art has to predate the patent. For most patents the practical cut-off is the earliest effective filing date the patent is entitled to, including any priority claims, which is why we call it the critical date. Patents filed before March 16, 2013 are governed by the pre-AIA version of 35 U.S.C. § 102, under which a patent owner may try to establish an earlier date of invention for some references. References dated more than one year before the filing date avoid that issue entirely. We report how far each reference predates the critical date so counsel can weigh this quickly.

Where the strongest art usually is

Commercial patent databases are where everyone searches first, and art cited during prosecution has, by definition, already been considered by the examiner. The references that change outcomes are often elsewhere:

• Product documentation. User manuals, installation guides and datasheets describe how real products worked, often years before a patent on the same idea.
• Standards contributions. Technical submissions to bodies such as IEEE 802 and 3GPP are dated, archived and detailed.
• Archived web pages. Captures by the Internet Archive record vendor pages, specifications and announcements as they existed on a given date.
• Conference papers and trade press. Academic proceedings and industry magazines document systems that were never patented.
• Foreign-language patents. Japanese, German, Korean and Chinese filings that never had a U.S. counterpart.

How we verify what we deliver

Every report passes an automated verification gate before release:

• Each cited document is retrieved and its text extracted, page by page.
• Every quotation is matched against that text. If it isn't there word for word, it is removed rather than paraphrased.
• Every pin cite is checked against the page where the passage actually appears.
• Every reference must be dated before the critical date, with the date evidence listed.
• Patent and non-patent references already cited during prosecution are identified and excluded.

Showing public availability

For each reference we list the evidence that it was public before the critical date: a publication date on the face of the document, a journal or conference date, a patent publication date, or an Internet Archive capture of the document or the page linking to it. Whether that evidence is enough to establish a printed publication in a particular proceeding is a legal question for counsel. Our job is to put the evidence in front of you, organized and linked.

What the report contains

Pricing and turnaround

A report covering the asserted independent claims of one patent is $1,500, delivered within 48 hours. Additional defendants in the same campaign are $750 each, and a joint-defense group license is $3,500 per patent. Reports are invoiced on delivery. See pricing.