Art of winning at IPR – Creating a stronger litigation strategy by attacking a problem from various angles
An attorney fighting a litigation suit is not unlike a soldier on a battlefield. The soldier equipped with sniper or high-tech weapons could give a deadly blow to the enemy, however, that’s not enough. He also requires something to defend himself, and most importantly, a devised strategy to conquer at any cost. An attorney, challenging […]
We use Non patent literature to find relevant patents which can serve as kickass prior art. Here’s how we do it!
In the US, while presenting a piece of non-patent literature (NPL) as a valid prior art, the litigators have to overcome challenges of proving that the NPL was publicly accessible and that the presented NPL complies with hearsay and authentication rule. As a vendor search partner, one way we try to make the life of […]
The Case of winning an IPR at PTAB
Old times were simple. There was a plaintiff, who tried to sue a company, and then the company asked us to find some good prior art. We logged in to simple patent databases, many of which were free, entered few keyword-based search strings and poof! good results. Case settled. The client was happy, we were happy! […]
How Machine Learning and Chinese Craigslist Helped Invalidate a Decade-Old Patent
In 2016, a major Chinese smartphone manufacturer came to us with a problem. The company was being sued by a competitor, also based in China, for patent infringement, and they would soon have to appear in court to defend themselves. The penalties for patent infringement can potentially be very painful—fines reaching into the millions of dollars, […]
How a Circuit We Designed Helped Solve a Prior Art Puzzle
In 2017, we were approached by an attorney representing a large manufacturer of digital and analog computer chips that we’ll call Chip and Dale Corp. The company had recently been contacted by another chip manufacturer. We’ll call them Chip Off the Ol’ Block LLC. Chip Off the Ol’ Block claimed that Chip and Dale were […]
How GreyB Uses the “Investigative Approach” to Navigate IP Research
Around the world, the system of patents that governs new ideas and technology can seem practically designed to mislead people, making them think that they can see the field clearly when in fact much of what’s visible is an illusion—truly vital information remains hidden. In an environment where incomplete information about tech and IP often causes […]
System Prior Art: Why we prioritize it over other references?
Have you ever been in a situation where your IPR got instituted, but the PTO declared the challenged claim as valid? If a challenged claim(s) is declared valid by the USPTO in IPR, and later a petitioner asserts earlier challenged claim(s) before a court, he has to overcome a challenge presented by 35 USC § […]
Share this with your search vendor when multiple round of searches lead to nothing
Many a time, even after multiple rounds of searches – in house, from the client’s side, and using vendors – leads to no results. One reason it happens because the winning prior art is unsearchable or in other words doesn’t come up using the keyword-based searches. We have found ourselves in such a situation multiple […]
Why you should add Expired Patents in a FTO report?
We received a freedom-to-operate search from John, a decade-old client of ours. We share a pleasant relationship where we could discuss our concerns and requirements straight away. John was handling the freedom to operate (FTO) project for one of his clients for the very first time. One thing we sensed that John wanted to give […]
Prior Art Search: Everything You Need to Know
If you want to understand prior art searches, you’ve landed on the right page. By the time you finish reading this guide, you’ll likely have built a solid understanding of what can be included in the prior art and how to use this knowledge to conduct a patent search and avoid spending valuable resources on […]
3 Instances Where We Invalidated Patents Infringed Under ITC Section 337
Patent infringement has become a lot common in the past couple of decades. With increased interconnectivity among technologies and the existence of thousands of patents covering them, it has become difficult to innovate without having infringed on at least one patent. Infringement is common and so are lawsuits filed in district courts demanding royalties. What […]
How We Found Prior Art For A Trade Secret Infringement Case Under ITC 337?
How difficult is it to find a solution to a problem you know nothing about? Difficult? Very difficult? Preposterous, you say? No, we are not being ludicrous. Though less often, there are instances when you’re looking for solutions to a problem you know little or nothing about. Despite multiple solutions that exist for every problem in existence, it […]
5 Ways to do an Advanced Prior Art Search Yourself
Have you come across a situation when the search vendor you hired returned with a report concluding “no reference found”? There could be multiple reasons that your vendor returns with such a report. Few among many could be a patent being strong/novel or time allocated is not commensurate with the technology area a patent falls […]
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 […]
How we found Prior Art of a Composition Patent for IPR?
Not all prior art searches are run equally. Some are complex, some are easy, and some test your temperament by pushing you to the dark abyss of self-doubt where you question your abilities and skills. This is the stage that demarcates winners from runner-ups. The thin line of demarcation that separates a winning patent search […]
Zomm vs Apple: Can US8351895 be invalidated?
Breach of contract, unfair competition, and willful patent infringement – The very terms predominant in the complaint filed by wireless manufacturer Zomm against the Cupertino-based tech giant. Early in April this year, Zomm filed a patent infringement case against Apple with the Southern District Court of New York. Unlike most other suits, this wasn’t simply […]
