How checking Change requests helped us invalidate a patent related to Mathematical expression?
The patent set was already exhausted. Searching on standards for hours started feeling like inside of a spiral that keeps tightening as you go down.
In between, some references emerged undeniable as the Sun in a clear sky. The truth, however, sometimes disappoints. The references had a date after the priority date or as the same date of priority. Within few seconds dark clouds again covered the metaphorical Sun.
All our prayers were going to god’s spam folder. An unknown force pressed the reset button and we were back to square one.
Despite all that, we did get past the finish line.
Let me tell you how.
We received a request from a client to invalidate a patent that was related to the concept of a random access procedure. More specifically, the patent was talking about a specific equation.
We have worked extensively on invalidation searches, but cases like these are really rare. However, we had a good start, as we found an important lead at the very start of the search. While checking the file history of the patent, we observed that the concept of random access procedure was used in developing many standards. So we attempted to build different routes to get to the required result using that lead.
The initial two routes were:
- Searching Standards, and
- Searching Patents
We started searching for patents. However, there was not much patent literature to analyze and it was clear that searching patents are going to be a futile effort. We quickly shifted our efforts on standards, hence.
Searching in standards is akin to looking for a pearl in an ocean. Since we were not able to narrow down to a particular standard, the literature became overwhelming and a big challenge. Here at GreyB, we believe that hard challenges help bring out the best strategy. That’s what happened.
Options to complete the search:
- Search each change request from the beginning of the development of the standard, or
- Backtrack the change request from the point of introduction of the equation
Since the literature was huge, we decided to check the change request in reverse chronological order so as to observe the development of the respective documents.
On checking each change request, we identified a paper by CATT with amendments. The suggested amendments had an equation similar to the required equation. Perhaps, only a few of the suggested amendments were implemented. Maybe that’s why the updated normative text documents related to the identified change request did not showcase the required information.
However, the amendments showcased the prior knowledge of the equation and, hence became a relevant reference. The paper was dated before the priority date of the subject patent and we were able to build a strong case for invalidation for the client.
Working on this was not a cakewalk, but with firm determination and some smart maneuvers, even the almost impossible becomes possible. So was the case with this case.
Anyhow, all’s well that ends well.
To writing more success stories!
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