How Sagacious IP’s Invalidation Search Helped a European Home Appliances Giant Invalidate a German Patent During a Patent Lawsuit

How Sagacious IP’s Invalidation Search Helped a European Home Appliances Giant Invalidate a German Patent During a Patent Lawsuit: Recently, a home appliances giant based in Europe was embroiled in a patent litigation over a German patent. To win the patent battle, the company was looking for a potential partner to perform a high-stake invalidity search and identify relevant prior art documents that could challenge the novelty of the German patent. Earlier, Sagacious IP had conducted a few landscape searches for one of the contact persons in that company and had received a positive feedback on the same. Basis the feedback and referral by that contact person, the company approached Sagacious IP for an exhaustive invalidity search project. The following article discusses how we helped our client accurately identify the most relevant prior arts to win the patent litigation.

Brief About the Problem

In order to win the lawsuit involving the German patent, our client had to identify all prior arts that could challenge the originality of the said patent. Given our reputation for quality and service reliability, the client entrusted us with the project to perform exhaustive invalidity searches.

Invalidation Search: Sagacious IP’s Solution

During our engagement with the client, we offered a multi-step approach to tackle their problem. At the outset, we developed a thorough understanding of our client’s requirements. A Document of Understanding (DOU) enclosing key features, search focus and search strategies etc., was then shared with them. Further, a kick-off call was conducted wherein the client agreed upon the project scope.

Post approval of the project scope, searches were conducted using a combination of multiple search strategies to capture the relevant prior arts. Additionally, German language keywords were also used to conduct searches to eliminate machine translation-related errors. Frequent interim reports were shared with the client and next steps were agreed upon.

After identification of the relevant prior arts, a search report was prepared containing detailed mapping of the identified documents with respect to the claim elements. Further communications with the client were carried out to clarify any doubts or receive suggestions pertaining to the search. Notably, Sagacious IP performed the Silver Bullet Invalidity Search for the client. This is a contingency-based service wherein the client pays full amount only if the killer prior art is identified.

Notably, the set of patents and NPLs identified during the invalidity search were first reviewed then analysed manually. At the end of the project, Sagacious IP shared the final findings in an MS word report (tailored with relevant and related patents) for an internal meeting at client site. After the first meeting, their team reached us back with specific questions regarding interpretation of certain technical aspects. In response to these questions, Sagacious IP’s team shared a follow-up feedback that helped the client convince all the internal stakeholders that the relevant prior arts had been identified.

Invalidation Search Impact

Our exhaustive invalidity searches helped the client identify relevant and related patents. Moreover, constant engagement during the project helped them make informed decisions. The invalidity search project was successfully completed within 50 hours.

The client appreciated the quality of search conducted by Sagacious IP’s team and was impressed with the identified prior arts. Sagacious IP is now engaged with multiple stakeholders at the client site on varied searches.

Final Thoughts         

Sagacious IP understands that it is crucial to identify the challenges faced by clients and develop strategies to tackle them effectively. Patent invalidity/validity searches are performed to either validate or invalidate the claims of a patent. This is generally the first action taken by an organization facing a patent infringement suit.

Sagacious IP’s Patent Invalidation/Invalidity Search Service enables clients to identify patent and non-patent documents which may impact the validity of claims of a patent. Our unique methodology not only helps clients identify relevant prior arts but also delivers the information they seek, thereby enabling them to make quick IP and business decisions. Click here to know more about the service.

Tushar Chaudhary, Nitin Sharma (Engineering) and the Editorial Team

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