Managing IP Risk from NPEs and Competitors through
Effective Invalidity Search Strategies
& Risk Analysis
Presented at
The London IP Summit
October 13, 2014
By
Brendan Sever, Group Leader – Semiconductors & Electronics Group
& Alex Kaufman, Senior Analyst – Software Group
Berlin
Boston
Paris
Moscow
Tokyo
Introduction to
Global Prior Art, Inc.
The People of Global Prior Art
Celebrating over 30 Years of Leadership
Telecom
Semiconductors
& Electronics
Chemistry
Materials
Mechanical
Software &
Business Methods
Medical Devices
Biotechnology
Brief Introduction to Global Prior Art
GPA’s Distinguishing Features:
A Demonstrated Record of Success – Over 30 years in the business
supporting in-house counsel and law firms with high stakes matters
Full-time Staff who are Technical Experts Trained in IP
Searching in the Original Language – Full-text, not machine
translation
Extensive Manual Review
In-House Library – Trade publications, data-books, product guides,
conferences, journals, games, not available online collected over past
30 years
Global’s Worldwide Capabilities
Japan (JP)
Russia (RU, SU)
United States (US)
Europe*
* includes EP’s and local patents
What Makes an Effective
Invalidity Search
A Good Search, How Long?
Q:
Can you conduct an invalidity search in 24 hours?
A:
No. The limited coverage represents that of a
patentability search. Packaging the findings with a fancy report
does not change this reality.
Q:
Can an invalidity search be carried out in 5 days?
A:
No. The depth of study is still limited. It is still only
enough time to search foreign art with keyword strings applied
to English abstracts and is insufficient to cover all relevant NPL
sources. Lots of shortcuts must still be taken.
Where To Look for Invalidating Prior Art
Patents from multiple regions (USPTO is critical, but so are
others such as EPO, JPO, and others)
Native-language non-patent literature from key countries
Product documentation and release announcements
Reference books and research reports
Dissertations/technical papers from universities researching the
technology
Literature Coverage
Specialized technical literature
includes circuit data books and data
sheets published by key
semiconductor companies.
In addition, technical manuals,
conference proceedings, circuit
Representative Data books:
encyclopedias and product manuals
Dallas Semiconductor
are often important.
Elantec, Exar, Fairchild,
Fujitsu, General Electric,
Maxim Semiconductor,
GTE, Harris, Hitachi, Intel,
TI, Motorola…
Japanese Products
Key Finding: “Beat Planet Music” - video game sold in Japan for the Japanese
Playstation gaming console
German Patents
Target Patent:
A vehicular seat-load sensor
Key Finding:
German Industrial Design
Target Patent:
Modular Lighted Tree
Key Finding:
The Factors Behind
A Flawed Search
The Most Common Reasons for A Flawed Search
Common Reason 1. Limited Expertise of Searcher
➢
➢
Searcher did not understand the technology
Failed to identify key references as relevant
Recommendation: Confirm expertise of search team.
If searcher requests keywords – Run. Run fast.
Common Reason 2. Flawed Coverage
➢
➢
Did not cover correct sources.
Did not identify most critical countries.
Recommendation: A competent search identifies the critical sources at the
start; the search process is transparent.
The Most Common Reasons for A Flawed Search
Common Reason 3. Flawed Execution
➢
➢
➢
➢
Failure to understand limitations in databases used
Flawed coverage of foreign art (review English abstracts rather than full
text foreign documents)
Cover readily available literature vs. most relevant literature
Patents with non-standard terminology not covered
Common Reason 4. Inadequate Budget
➢
Budget is inconsistent with search requirements; Frequently the result is
a “patentability search” dressed up as an invalidity search. A cheap
search now will cost you more later.
Solution: Review search plan for warning flags.
The Risk You Run
Assigning Risk and Exposure to IP Strategies
Source: PWC 2012
Patent Litigation Study,
Page 12
Assigning Risk and Exposure to IP Strategies
Median Damages Awarded by Industry for NPE and Practicing Entities (in MM)
Source: PWC 2012 Patent
Litigation Study, Page 16
Conclusions
➢ In high stakes litigation, an effective invalidity search can dramatically
change the outcome and save millions in damages
➢ There are no shortcuts to effectively locating prior art
➢ Different search approaches have widely divergent success rates
➢ Many firms are tripped up by relying on searches carried out in a manner
that maps to a patentability or Accelerated Exam search
➢ Transparency – It is critical to understand the background of the searchers
performing the work and how the search is carried out, since this has such
a huge impact on a successful outcome
➢ A risk and value analysis confirms it is always cheaper to do it right the
first time.