Recently, a start-up based in Washington, DC, trusted TT Consultants and provided an opportunity to strengthen their pending patent portfolio with an overall motive of asserting and licensing their patents. The start-up was mainly involved in the cutting edge technologies in the automotive technology space with a smidgen of pending patent applications to shield their inventive technologies.
- As the domain in the automotive industry is already crowded and the client had the handful number of innovative patent applications, their foremost requirement was to strengthen and expand their patent portfolio during the prosecution stage only to claim other potential innovations that might be included in the patent specification and later on to assert these claimed inventions.
- Another major hurdle was the diversification of embodiments in the patent specifications and the decision to protect which particular invention to strike the right balance between the commercial viability and strength of the claims.
Given the challenges, we at TTC formed a team of experts having gigantic experience in the automobile/Vehicle tracking domain and drafting as it is a well-known fact that for any task to be successful, you need to have the right team doing it.
First of all, the team identified the top players in the automotive technology space using our in-house proprietary intelligence tool XLPAT and analyzed the latest technologies/products these companies are investing in.
Once the team had a target in the mind, we started to fine tune the claims of the pending applications so as to design around the pending claims in view of the latest technologies/products and at the same time keeping the strength of the claims at the back of our mind.
Along with this, the team also identified additional innovations encapsulated in the specifications based on the identified products available in the market which could easily be targeted once the patent is granted as these new applications are continuations of the parent patent application claiming the earliest priority date and the products are recently launched.
The claims of the patent applications were well-crafted to a generous degree to ensure that along with infringing multiple competitor products available in the market-space, they would also be able to withstand multiple oppositions such as inter-partes reviews. In the later stage, we identified the infringing products of competitor companies and prepared in-depth evidence of use claim charts to prove the potential infringement of the client’s patented technology.
With these solutions, TT Consultants was not only able to add on to the value and strength of the client’s pending patent portfolio but also able to pitch a unique service altogether where clients can engage with TT Consultants right at the starting/prosecution stage when the patents are not even granted to continuously optimize the patent applications to ensure all the possible inventions are well covered and claimed.
So far, 11 patents that are granted in the client’s portfolio using the aforesaid conscious strategy have been asserted against 50+ automobile companies on the basis of detailed Evidence-of-Use claim charts prepared by our team, wherein, most of these companies have licensed client’s proprietary technology. However, a few competitor companies that challenged the validity of the patent through PTAB petitions have failed miserably as all 4 IPRs filed till now against our client’s patents have been dismissed by PTAB, and the client’s patents have escaped the PTAB petitioning process unscathed.
Co-author: Harjinder Singh