In the US, when presenting a piece of non-patent literature (NPL) as valid prior art, litigators must overcome the challenge of proving that the NPL was publicly accessible and that it complies with the hearsay and authentication rules.
As a vendor search partner, one way we try to make the client’s life easier is by providing sufficient corroboration that the prior art relied upon actually qualifies as prior art. Another way (our favorite) is to treat it as a lead to identify a patent document to address the aforementioned challenge. In other words, whenever we find a relevant non-patent, we try to identify corresponding patents using those NPLs as leads.
Today, in our brief time together, allow me to share a few instances in which we found relevant patent documents after getting our hands on these pieces of non-patent literature (NPL).
System Prior Art
Finding in-depth working details of a system’s prior art is like scaling K2 in the dead of winter. And if working details are found, verifying the release date of a system that serves as prior art is nothing short of a steep hill climb.
One odd among many (thousands, maybe!) that works in our favor is that most companies protect their product lines with patents before release or market launch.
Thus, exploring the company’s patents makes sense. In our experience, this strategy has come in handy in many cases and helped us identify relevant patents. Allow me to share one such instance with you.
The patent under question, in this case, related to dynamically adjusting power cap settings for electric components by monitoring their power consumption. Whenever the power cap of a first electronic component increases due to increased demand, the power cap of a second electronic component is reduced to ensure the system’s overall power limit is not exceeded.
The initial rounds of searching led us to Dell OpenManage Power Center, which used similar technology for power management in servers. The release date of the Dell OpenManage Power Center – which was 2009 – was 3 years after the cut-off date.
However, this indicated that Dell could have patents filed on Power Center. So, we fired our research shot at Dell’s portfolio. And it hit the bullseye. We found a prior-published application, US20050102544A1, disclosing what we needed.
In another such instance, Jimmy Shisha by Kanben Services Inc. (video of 2018) took us to WO2015172224A1, which was a bang on prior art in another project.
When NPL was a relevant design
In the past, we have conducted successful design patent searches for chair designs, flash drives, e-Cigs, etc. We utilize multiple databases and scout websites like Kickstarter, Amazon, and AliExpress.
Resource alert: We have rounded up some of the best spots to find prior art and shared them in a print-friendly guide. Get your copy here – 7 Unusual places to look for a design patent search.
The search might not be a hard nut to crack, but the NPL design prior art again poses the same old challenge – verifying product launch date.
One such case was when we were working on a pen drive. Let us take an example of this weirdly shaped pen drive. After some searching, we found a product by Leef Technology. However, it was first added on the company’s website in 2015, and we couldn’t use it as it was displayed 1 year after the cut-off date.
Adopting the above-mentioned strategy, we decided to explore the patent portfolio of Leef Technology. The hypothesis behind the decision was that the company would have definitely started working on the product a few years before they launched. So we started looking for all the traces related to the product. We explored all the patents, design, publications, everything.
The results declared the hypothesis valid. We located a design patent USD749599S1 (filed in 2014) in their portfolio:USD749599S1
It was amazing when we spotted it.
In another project, the Lille baby carrier led us to USD693569S1, another relevant patent that helped our client in litigation.
Lille baby COMPLETE Baby Carrier
3GPP documents
Over the past decade, we have worked on numerous invalidation projects involving patents related to telecommunications technologies such as LTE, UMTS, GSM, and so on. We developed many unconventional search methodologies and proprietary tools along the way.
Today, a large part of our client base is from the telecom domain. The tools and methodologies developed in conjunction give us the speed and quality to execute these projects.
One of the methods we devised is to explore workgroup meetings of different standard bodies, such as 3GPP. Telecom companies that are part of standard bodies present the proposal/solution before filing a patent in a meeting. There is a high likelihood of a company obtaining a patent for such proposed documents/solutions.
So, when we find a relevant 3GPP document, we check the patents of the concerned assignee. This very strategy has proved quite fruitful in a multitude of cases. One such case involved locating document R1-070795, which Motorola submitted on February 12-16, 2007. When we looked in Motorola’s portfolio, we landed on application US20080188260A1 filed on February 02, 2007, disclosing a similar concept.
R1-070795: Uplink Power Control for E-UTRA (February 12-16, 2007)
Also, it is likely CQI will be periodically transmitted by each UE such that a pathloss report could once every 50ms displace a CQI report by using the CQI uplink resource.
US20080188260A1 (February 02, 2007)
[0084]
Also, it is likely CQI will be periodically transmitted by each UE such that a pathloss report could once every 50 ms displace a CQI report by using the CQI uplink resource.
Bonus Strategy: Searching for patents that belong to the authors of the relevant NPL publication
At GreyB, when we teach new hires patent searching, we teach them the importance of capturing different types of information as the search progresses. This inculcates in them good observation skills and the ability to combine dots and recognize patterns.
In prior art searching, it is also quite important to identify researchers who have worked in the technological domain of the invention. Case in point: Once we were working on an invalidation related to an Inverted-F type antenna for a mobile having a specific arrangement of a matching circuit and a capacitor. When we searched in Journals & Scholars, we found that a researcher named King-Lu Wong had many publications on inverted-F type antennas.
We decided to check the patent publications of this very inventor, which led us to many relevant results (like US20110018783A1 and US20120188135A1) that were later used as prior art.
Conclusion
Over the years, prior art searching has exposed us to various tactics and strategies that have yielded effective results and helped us fine-tune our search methodologies and approach. We have made it our mission to share these valuable strategic insights with everyone so that anyone can conduct an efficient prior art search on their own.
Some might ask: Does it make sense for an IPR consultancy to share its most valuable yield-generating tactics with the rest of the world? To which our answer is, while we can give you all the knowledge we have in our vault, our conviction to find prior art from the deepest metaphorical trenches can never be surpassed by anyone. Besides, the real value lies not in having all the knowledge of the world, but in using the right tactic at the right time. If you’d like to witness this conviction and approach to work firsthand, send us a message:
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Relevant ongoing cases where the above-mentioned strategies can be applicable:
- 2-21-cv-00010 (EDTX) Ericsson, Inc. et al v. Samsung Electronics Co., Ltd. et al
- Patents involved in the case: US10172066B2, US8301149B2, US9037166B2, US9107082B2, US9509605B2, US9692682B2
- Technology areas involved: Communication, UE, Data fames
- 6-21-cv-00026 (WDTX) Neo Wireless LLC v. Apple Inc.
- Patents involved in the case: US10075941B2, US10447450B2, US10833908B2, US8467366B2, US9363066B2
- Technology areas involved: Multi-carrier packet communication
- 6-20-cv-01112 (WDTX) AliveCor, Inc. v. Apple Inc.
- Patents involved in the case: US10595731B2, US10638941B2, US9572499B2
- Technology areas involved: Smart watch, Cardiac monitoring, Photoplethysmography (“PPG”) sensor, ECG sensor, Memory with stored instructions
- 2-20-cv-00295 (EDTX) ACQIS LLC v. Samsung Electronics Co., Ltd. et al
- Patents involved in the case: US8977797B2, US9529768B2, US9703750B2
- Technology areas involved: Circuits for chips and processors for peripheral data communication (like USB), Core Electronics, Smartphone/tablet/PC/TV
More relevant strategies that can be explored for such cases:
- Prior art search – 4 Cases where finding reference was next to impossible (4th case is related to change request; highly relevant)
- How we used 3G and GSM concepts to invalidate 4G LTE Patents?
Authored by: Aman Kumar, Sr. Research Analyst, Search Team and Nikhil Gupta, Manager, Search Team.