OBJECTIVE
The patent that we received from the client was related to Wireless communication and covered the process for handling lower-priority communication traffic.
STORY
This time, we thought to start the search in a regular way. We began by developing a detailed understanding of the patent, followed by a thorough analysis of the file history to identify its novel aspect. The file history of a patent provides a great deal of information on where prior art could be found. We use it more often than not; here is one account: How Intermatic could win this patent fight.
Subsequently, we implemented conventional search strategies such as keyword-based (patent/non-patent), class-based patent, and name-based searches for prominent inventors/authors and assignees/companies in the domain of wireless telecommunications. However, conventional strategies, as they are referred to internally at GreyB, yielded neither results nor leads.
Then, our well-known brainstorming process started. Team members got together to generate ideas on where the result might be. We started thinking of different ideas that can take us closer to the result.
One member of the team shared an interesting observation: A person learns from the environment surrounding them, so it was possible that the inventor might have drawn inspiration or ideas from the colleagues they interacted with.
That was a good data point for us. We started by collecting all the background information about the inventor, such as which university she graduated from and which organizations/committees she is affiliated with.
From this, we learned that she is a member of the committee that develops IEEE standards. Though it looks like a very basic observation, we have a hunch that we are going to find something here.
There are many discussions in these committees, and various ideas are exchanged. So, we reviewed each and every discussion and IEEE papers in which the inventor has contributed. Guess what? We came across a version of IEEE standard 802.11 – 2007 that described a concept very similar to the patent, though in a slightly different manner.
That was a great find. However, before we could get any happy, we found that this standard was published post the priority date of the subject patent. So even though we had a good lead, we were back to our original challenge. So we got our act together and started working on the next steps.
We were well aware that a number of members contributed to this Standard; hence, we hoped that the relevant section could have been proposed by another contributor before the priority date. We tried to identify when the relevant section was proposed for approval, so it could be considered part of the standard.
Now, the question in front of us was – how to identify this time? We again brainstormed and came up with two options –
a) Check the literature by each and every person who contributed to that standard; however, this is going to be a very time-intensive task, and
b) We knew that normative texts are proposed by the contributors of the IEEE standard, which is either accepted or rejected by the standards developing committee as part of the final published standard.
We selected option (b): We began reviewing normative texts that contributed to the relevant portion of the standard and ultimately found a relevant document that had been submitted to the committee for consideration before the priority date of the subject patent.
Voila. Isn’t that what we were looking for!! This project was too much of a roller coaster for us, but in the end, we felt great because it led us to what we were looking for.
Relevant ongoing cases where the above-mentioned strategies can be applicable:
- 8-21-cv-00046 (CDCA) Core Optical Technologies, LLC v. Comcast Corporation et al
- Patent involved in case: US6782211B1
- Technology areas involved: Modulation, optical system, polarization
More relevant strategies that can be explored for such cases:
- How a Circuit We Designed Helped Solve a Prior Art Puzzle (Related to IC designs)
- How we found references in non patent literature without performing an NPL search? (Related to circuit design)