Patent Invalidation Lawyers
Block45 Attorneys provide patent infringement defense and patent invalidation search services for clients in Colorado and across the country.
Patent Infringement Defense
At Block45 Legal, we understand that patent infringement defense is a serious concern and can be costly and taxing on business operations. Therefore, our lawyers work with our clients to find the best options possible. That could mean settlement negotiations to avoid litigation or taking a case to trial to invalidate the patent claims asserted. We defend against the patent infringement allegations through:
Trial in Federal Court
Challenges in the US Patent & Trademark Office (USPTO), Patent Trial & Appeal Board (PTAB) called inter partes review or “IPR”
Cease and Desist Efforts
Settlement Negotiations
Our legal team has the technical experience, trial skills and industry knowledge for patent infringement defense in court or with the USPTO — although clients often desire resolution of patent infringement allegations outside of trial. We also have experience in various forms of dispute resolution to defend against patent infringement allegations. We work with clients to find resolution in a manner that best suits their business needs.
As part of our patent litigation services, we also act as local counsel for out-of-state defendants.
Steps We Take in Defending Against Patent Infringement Claims
Patent owners have the burden of defending the validity of their patent even after issuance. Pro-active discovery, investigation, and pre-trial work, including technical and procedural considerations unique to the case, are vital to a successful defense.
When handling infringement cases, there are general stages of action at which a case can be successfully defended against:
Motion to Dismiss – Attacking the validity of a patent infringement claim begins with determining a basis for filing a motion to dismiss under Rule 12(b)(6) of the Federal Rules of Civil Procedure. Among other things, the motion to dismiss will allege the patent is invalid for failure to comply with one or more of the conditions set forth in the U.S. Code. As illustrated by rulings in the Limelight case and the Alice Corporation case, for example, patents of abstract concepts are not entitled to legal protection. Additionally, patents that fail the “machine or transformation test,” which determines if a patent (often a process patent) is inextricably tied to a machine or apparatus or transforms an article into a different state or object, are not entitled to protection and may be subject to a motion to dismiss..
Infringement Contentions – Plaintiffs must make their case for infringement on each of the claims with appropriate specificity in its Preliminary Infringement Contentions (PICs). If the plaintiff fails to do so and the proper objection is made, the judge may strike the allegations. We attack Infringement Contentions to the extent that they fail to comply with either the court's rules or the applicable legal standards. Because a claim cannot be based on stricken allegations, a case can be won at this point.
Invalidity Contentions – Proving a patent is not valid, and not entitled to legal protection, can be achieved through challenges made in Invalidity Contentions under a number of circumstances. These include Sections 101, 102, 103, and 112 of the U.S. Code, or un-patentable subject matter, prior art, obviousness, and indefiniteness.
Markman Hearing – This is a claims construction hearing, in which the judge gives definition to the material terms and words in the patent's claims. We aggressively advocate as to how the judge construes our client’s claims, whether narrowly or broadly, so that their construction and interpretation falls in the manner that is in the best interest of our client and most favorable to their defense.
Motion for Summary Judgment – Determine whether there is a basis to argue, as a matter of law, that there is no issue of material fact to be determined by the judge or jury, and that we are entitled to judgment and case dismissal. Our goal here is to win the motion for summary judgment; if we do so, you will be spared the time and expense of defending the case at trial.
Patent Infringement Letters – View our blog post: What to Do If You Receive a Patent Infringement Letter to learn more about steps to take if a patent infringement letter ends up in your mailbox!
Requesting a Declaratory Judgment From the Court
On occasion, we encounter situations in which the customers of our client, but not our actual client, are sued for patent infringement. In a typical case (such as those involving software licensing), your customers may request indemnification from the liability created by a patent troll's infringement claim. Our goal is to "beat the troll to the punch" by filing a declaratory judgment action.
In a declaratory judgment action, we ask the court to declare that the patent is invalid due to un-patentable subject matter, prior art, obviousness, and indefiniteness.
In these types of patent infringement cases, our Denver patent attorneys can in effect defend both you and your customers, and if we are successful in obtaining a declaratory judgment, we will have the patent declared invalid before you are required to provide indemnity.
Defending Against Patent Trolls
Patent trolls, or non-practicing entities (NPEs) which bring a majority of patent infringement cases, pose substantial threats to both business owners and entrepreneurs in their attempts to seek financial awards. Although these cases pose unique challenges, they can be effectively handled by our experienced attorneys.
When defending claims brought by patent trolls, we work to not only assess exposure to damages and validity of claims, but to also develop tailored strategies for securing the best possible results given the circumstances at hand. In many cases, this begins with the motion to dismiss, which will allege that the patent does nothing more than describe a well-known, and typically obvious, abstract idea, or raise arguments as to a claim’s failure to identify the infringing product, insufficient rights of the plaintiff, or improper jurisdiction.
Patent trolls’ business models focus on getting as much money as possible as soon so possible. As a firm that represents legitimate and successful businesses across the country, we draw a hard line in the sand when clients face illegitimate claims, and work aggressively to defend against recurrent claims and demands for what are, in effect, ransoms. Learn more about patent trolls by viewing our blog post: Understanding Patent Trolls: Impact and Defense Strategies.
Protect Your Rights and Interests With Block45 Legal
Our lawyers are dedicated to fighting on behalf of a diverse clientele in challenging intellectual property disputes and patent infringement cases. If you wish to discuss your potential matter with a member of our team, and learn how our background, decades of experience, and breadth of knowledge can be of benefit to you, call us at 303-353-4531 or visit our contact page today to schedule a free consultation with our patent attorneys.
What is Invalidation Search/Invalidity Search?
A patent invalidity search is a prior art search performed on a granted patent to invalidate the claims of the patent (also referred to as subject patent) on grounds of novelty, obviousness and/or inventive step.
It is also known as invalidation search or opposition search. These searches are conducted in order to identify relevant patents as well as non-patent literature that is in line with the claims of the subject patent and are generally overlooked by the examiner during examination.
Patent invalidity searches are generally conducted by competitors or defendants in an infringement claim, and they are conducted after a patent is issued. This “extensive prior art search” has the goal of invalidating a patent using any prior art that may have been missed by the USPTO. A patent invalidity search differs from a normal prior art search in that a patent invalidity search focuses on the claim language of the patent instead of the overall invention idea.
These prior arts are beneficial if they are published before or are available to the public before the earliest filing date of the subject patent. This is in accordance with various laws that are considered for invalidation by different jurisdictions.
Types of Patent Invalidation Search
When the search is performed to check the validity of the claims, it is called a validity or validation search. The steps of performing a validity search as well as an invalidity search are similar. The only difference lies in which party is interested in getting the search done.
To further elaborate, an invalidation search is performed for a party against whom a lawsuit is filed (defendant). The defendant tries to fight the lawsuit by killing the patent itself in question based on which, the lawsuit is filed.
However, the validity search is performed by the patent owner/assignee themselves to check whether their portfolio is strong or what are the chances of the patent being valid enough so that it would not be invalidated in the future in case of a lawsuit being filed.
When a party owning a patent (plaintiff, one who files the case), files an infringement suit against a competitor (Defendant) in a court of law for unauthorized/unlicensed/illegal usage of a protected (patented) invention, the defendant resorts to invalidity search to render the claims invalid. Once the patent grant is declared invalid, there will be no infringement suit. Thus, it is used as a remedy against infringement contention.
Scope of Search
Patent validation/invalidation searches are always performed on the claims of the subject patent and little focus is given to the subject matter and different embodiments present in the description. However, the claims are interpreted in the light of the subject matter.
The client can get the invalidation search done on various claims decided on the basis of infringement contentions. One can get this information from a complaint letter filed in the lawsuit. Complaint letters can be accessed from various sources such as RPX, USPTO, etc.
Search Strategy
The invalidation search begins with first assigning a team that understands the patent invention and establishing a search cut-off date. Generally, the earliest priority date (sometimes also referred to as the earliest filing date) of the patent is considered the search cut-off date.
Any patent or non-patent literature (also known as prior art) disclosing the claimed invention or giving the idea of the invention to a person skilled in the art can be used to invalidate the patent in question or also known as subject patent. Prior art must be published before, used before, known before, or sold before this date in order to act as a valid prior art and to be used in a court of law to prove the invalidity of the claims.
There are different search criteria to identify prior arts. A set of search strings are collected and applied to various databases. Search strings are formed based on different technical and non-technical keywords and related synonyms, based on international classifications such as IPC, CPC, ECLA, FI/F-terms, etc, based on the most active players in the domain and other strategies.
To begin, various searches such as citation analysis, similar search or family analysis in other jurisdictions, and their prosecution history analysis can be performed as a first pass search strategy.
Citation Analysis is analyzing a patent set comprising A OR B, where A is forward citations of backward citations of the subject patent and B is backward citations of forwarding citations of the subject patent. These citations A, B can be OR’ed or AND’ed depending upon the number of search results, time allocated for search, etc. Note that in this case, A and B are just used for explanatory purposes and can be used interchangeably.
Family Analysis in other Jurisdictions and Their Prosecution History Analysis is information set comprising backward citations of the backward citations of family members of the subject patent, apart from the backward citations and their family members of the subject patent. Now this appears absurd, however it makes ideal sense.
This is because, it’s miles possible that in a few cases, the family members of the subject patent have one or more exclusive backward citations than the subject patent itself. These backward citations which aren’t cited at the face of the subject patent, as a result can show to be beneficial to invalidate the subject patent. Therefore, it is wise to examine this information set.
Similar search is simply a set of patents that are of similar domain or field of technology as that of the subject patent. Thus, they can prove to be useful.
Along with patent search, one must also perform a non-patent search on various databases such as Google, IEEE Xplore, Science Direct, etc. The non-patent prior arts must be published or available to public before the search cut-off date.
Apart from this, one can also perform a standard-based search on various standard databases such as IETF, ITSE, 3GPP, etc.
The purpose of a patent invalidity search?
A: The purpose is to find any important prior art that had been missed by the patent examiner. This search can support a challenge to another person’s patent or can help defend against an allegation of patent infringement.
When considering a challenge to—or defense of—a patent’s validity, it is essential that there be a good understanding of the patent in question. There are multiple ways to invalidate a patent:
Examine the “file wrapper”—Every patent examined at the USPTO has a file wrapper that documents its history. This includes all the communications and documentation relating to the application by both the examiner and the applicant. A review of the initial claim rejections, the reason for such rejections, and the listed prior art already given in the history may point to similar claim language in other patents signaling a possibly weak patent with a high chance of being invalidated.
Conduct an extensive prior art search—Looking at prior art in the same family as the patent at issue (or looking at any citations for the patent or even citations of the cited patents) also can be useful for an invalidation claim.
Prove that the invention was on sale or available for public use—A patent can be invalidated if, within the 12 months prior to the filing of the patent application, the invention was on sale or available to the public in the United States, patented in another country, discussed in a publication, or recognized by other inventors in the US before the invention by the applicant.
Ultimately, a patent invalidity search is similar to a general prior art search, but with a more specific goal. Instead of trying to find all prior art that relates to an invention or potential patent, invalidating a patent involves research specific to a single patent that is either being defended as valid or prosecuted as invalid.
This type of specific search underscores the importance of completing a comprehensive search for prior art as part of a well-developed intellectual property strategy.
Call us today at 303-353-4531 or submit your information through the form below and receive your free consultation!