Leveraging Patent Invalidity Searches for Initial Defense in Pre-Litigation

The significance of technology in modern business has skyrocketed in recent years. Consequently, companies continually securing patents to safeguard their innovations have seen a surge. This uptick in patent filings has, in turn, led to increased opportunities for patent invalidity, as well as the emergence of patent infringement lawsuits. Businesses facing such lawsuits or aiming to steer clear of them often resort to patent invalidity searches to challenge a competitor’s claims and evade potential damages. Besides being a crucial tool during litigation and infringement scenarios, patent invalidity searches are also indispensable in pre-litigation settings.

In this article, we delve into how a Fortune 500 behemoth, which sought the expertise of Sagacious IP for patent invalidity searches, managed to nullify the claims of a plaintiff even before entering litigation.

Understanding the Challenge: A Fortune 500’s Pre-Litigation Dilemma

Our client, a US-based Fortune 500 company specializing in computer memories, semiconductor technologies, and data storage solutions—ranging from dynamic random-access memory to flash memory and USB flash drives—received an informal notice alleging patent infringement. Alongside the notice came a list of patents from another company (the accuser/plaintiff), urging our client to obtain licenses for the mentioned patents. Faced with the prospect of potential damages, it was imperative for our client to respond to the accuser swiftly. However, lacking claim charts or any evidence detailing how their products purportedly infringed upon the listed patents, the client sought Sagacious IP’s assistance to mount an effective defense.

Tailored Solution: Sagacious IP’s Approach to Patent Invalidity Searches

Upon comprehending the client’s predicament, our team proposed a prompt and cost-effective strategy tailored to their needs. Given the absence of specifics from the accuser regarding infringement, we devised a plan to target broader aspects of the claims predating the patents’ priority dates. Instead of adhering to conventional patent invalidity approaches—typically involving exhaustive searches for all claim elements (102 and 103 art)—we opted for swift searches aimed at identifying numerous prior-art references broadly disclosing novel aspects of the patents’ claims. This approach, coupled with a broad/clause-based mapping report, proved instrumental in saving time and effort typically invested in comprehensive reporting and claim mapping.

This approach proved invaluable in aiding our client to formulate an initial defense against the accuser. The accuser had not outlined how they intended to prove infringement infringement nor articulated why they demanded the client to acquire a license. Furthermore, the insufficient evidence to support their claims prompted our team to adopt a proactive stance. By focusing on broader aspects of the patents’ claims, we aimed to demonstrate the lack of novelty and strength in the accuser’s patents, thereby bolstering our client’s defense strategy.

Unveiling the Impact

The patents in question were related to the field of semiconductor technology. For instance, one of the patents disclosed a semiconductor device having a layered structure and the use of a multiple-mask exposure process during the fabrication of the device. The patent’s claims also included the different layers present in the device. So, in this case, instead of searching narrow aspects of the claim to identify 102 prior arts, we searched broadly for the purpose of the claims, i.e., the use of the multiple-mask exposure process in the semiconductor device fabrication. During our search, we identified around 25 prior arts including 102 and 103 references. Using analysis, we proved that the use of the multi-mask exposure process in the layered semiconductor device was state-of-the-art, i.e., extensive art was present related to this domain before the priority of the patent.

The client could use these identified references to inform the accuser that their patents were not strong enough and that they could be easily invalidated based on identified prior arts. Furthermore, such a large number of references could help the client to quickly analyze the identified references to find the killer prior art (102), in case the accused company filed a lawsuit against them in the future.

Conclusion: Proactive Defense with Patent Invalidity Searches

In conclusion, the collaboration between our client and Sagacious IP exemplifies the efficacy of patent invalidity searches in preemptively defending against infringement claims. The bespoke solution provided by Sagacious IP furnished our client with a comprehensive report highlighting all prior art references and their broad mapping, empowering them in their initial defense against the accuser. Armed with insights and a plethora of prior art references, our client effectively countered multiple intimations and notices from the accuser. Furthermore, our tailored approach not only saved costs but also empowered the client to navigate legal challenges with confidence. As businesses continue to innovate and patent landscapes evolve, proactive measures like patent invalidity searches serve as invaluable tools in safeguarding intellectual property rights.

For businesses seeking bespoke solutions to their intellectual property challenges, Sagacious IP stands ready to provide tailored strategies and expert guidance. Reach out to us today to explore how we can partner for success in safeguarding your innovations and navigating the complexities of intellectual property law. Learn more about our Patent Invalidity Search service.

By Mohit Sharma (ICT Searching) and the Editorial Team

Having Queries? Contact Us Now!

You may also like...

Leave a Reply

Your email address will not be published. Required fields are marked *

Exclusive Webinar Series
Exclusive Webinar Series. Cost: $0 (Free) Limited Seats Available. Don't miss the opportunity, Register Now