Patent Invalidity Process – Exploring the Unexplored
Invalidation searches play pivotal role in patent litigation or infringement cases. The aim is to find prior art which examiner has missed during prosecution at can challenge the novelty or obviousness of the patented invention. Compared to other patent-related searches, invalidation search poses stiff challenges, and it demands unconventional approaches. Furthermore, the relevant prior art may exist in any form such as patent, non-patent, images, videos, blogs, lectures etc. When the going gets hard with conventional approaches, we as a team at TTC (TT consultants) go harder and enjoy the adventure ide of non-conventional approaches. Below are the few case studies which landed us on relevant prior arts using which our client got a significant fit.
A US big biopharmaceutical firm gave us the opportunity to perform an invalidation search for a patent owned by one of its close competitors. TTC has a lot of major clients, but this was our first time working with such a large life science organization, so we were on the edge of our seats right from the start.
The patent independent claim was focused upon a novel cancer antigen amino acid sequence having immune activation property. Having access to the best in industry bio sequence search paid databases such as STN and Genome Quest, we were confident that we would be able to find something close. Surprisingly, we end up getting nothing after trying every bit of exercise whether it was bio sequence search, keyword search, class-based search or assignee-based search. The team was running out of time and feeling low at this moment.
At this juncture, we decided to go de novo and conducted a fresh brainstorming session. During the discussion, a very interesting idea was put forward by one of the doctorate holder life science expert. He suggested that most if not every researcher’s new research project has an imprint of his/her previous scientific expertise or training. Now, we started investigating the research history of the subject patent inventor and we were determined that we will dig each piece of info associated with the inventor. We not only researched his previous publication or article but also investigated his co-authors publication be it patents or non-patents. At this time, we also used many tools such as semantic scholar to get an idea about the influencing authors of the subject patent inventor.
Guess what? We found a research article published by his supervisor as a corresponding author 15 years back where he demonstrated screening result of hundreds of peptides for its anti-cancer properties in tumor induced mice. Coincidentally, one of the peptides had amino acid sequence identity of 100% with the sequence claimed in the subject patent. We were more than happy because we’re able to leave an excellent impression on the client’s mind with this prior art.
Note: The authors in the above figures are exemplary and not related to the actual case handled (Source: Semantic Scholar)
#2 Decoding the Source Code: Software Patent Invalidation
The innovation and product launches in the domain of machine learning have increased at a logarithm scale and so do the infringement cases. On our desk was new invalidation case involving a way of classifying objects using a machine learning algorithm via a certain set of procedures (which was part of algorithm) such as data file compression, merging, deduplication, and so on. The uphill task that was assigned to us by the client as we were required to map all the claims (be it independent or dependent) against the prior art. The team started the journey of invalidation as usual and conventional approaches yielded nothing. Now was the time for unconventional approaches. We gathered the list of all the major players working in the domain and started research around their different software platforms launched prior to the cut-off date of the subject patent.
Interestingly, we found one of the product datasheets owned by a leading player, that broadly revealed the working methodology of the platform for object classification whose various features which was only partially overlapping with the subject patent. The job was still half-done. We presented this result to the client as an interim update and with his permission, we proceeded forward with a reverse engineering approach. We bought the product, and our coders & software engineers were aligned with the invalidation team to understand the code or algorithm. Eureka moment! the analysis of codes and commands of the competitor product revealed very similar working methodology when compared to the claimed invention in the subject patent. We were able to map all the claims of the subject patent with majority of features explicitly matching the product. Our reverse engineering approach paid off.
As per the TRIZ theory, someone, somewhere, likely came up with a solution for the challenge you currently face or something similar. This is so true when we think about a case of Invalidating a patent related to the domain of minimally invasive surgery and got the answers in the domain of excavator. A leading medical device company was facing a stiff challenge in the infringement case where they were the defendant. They reached TT Consultants for invalidation of the plaintiffs patent whose claim was directed towards a minimally invasive robotic surgery device that comprised of multiple pedicle screws, engagement members, crosslinking members, etc. After battling for two weeks, we were still empty-handed.
Sometimes, we are so drowned in the problem that we forget that every problem may have simple solution lying somewhere else. A brainstorming session was planned that included mechanical engineers, biomedical experts, and life science team. Interestingly, a suggestion came from an expert not directly related to the domain wherein he suggested that he has seen such type of devices and workings in the land excavator domain. Now, the aim of such meetings is to respect and consider each idea whether it’s simple or complex. Accordingly, few of the project team members were allocated the task to explore the domain of similar devices in the cross domain such as excavation machines. Amazingly, we found a robotic excavation device whose components and working were extremely close to the claimed invention. On sharing the result with the client, he was so impressed with our skill that we landed up getting FTE deal signed for the future projects.
At TT Consultants, the diversity & depth of technology expertise comprising people with bachelors, masters, doctorate, and post doctorate degrees has helped us to build an altogether different level of reputation to solve client problems. TT Consultants believe that majority of ideas in research come from another pre-existing idea, knowingly or unknowingly, and that there are an infinite number of ways to find relevant prior art, provided that the team working on the case has the knowledge, expertise, smartness, patience, and belief to keep looking, until the send button with the report as an attachment for the client has been pressed.