Stu Soffer of IPRIORI has conducted an interesting study on 109 recent patent cases. He looked at the types of prior art cited by courts in making decisions on invalidity. The following is excerpted from Mr. Soffer’s recent report:
“Some time ago I started tracking in my ePriori database the type of art (and the reference itself) of prior art applied against specific patent claims found in dispositive orders — Summary Judgment Orders and Appeals – materials that presumably rise above the heap presenting the best arguments. I don’t track the art in file histories unless it is specifically part of the final litigation. What follows is a very small sampling and may not hold with larger samplings, but seems plausible. This mini-study covers 342 items of art applied to 147 patents in 109 patent cases.
This small sample tells an interesting story, including the breadth of materials to consider. Most frequently used are other patents. I would have expected ‘articles’ to be the next, but instead citations to ‘products’ is the second most applied. This is possibly a reflection of the knowledge of the parties of the history of their markets. Another indication is that the materials most often searched online – the easily accessible — only account for 64% of materials. The ‘other’ category includes: theses, source code, software, websites, textbooks, compounds, print, grant proposals, advertisements, press releases, technical standards, and patent applications. The ‘ephemera’ category captures real oddities. For example, a dental mould of teeth.”
This evidence comes from litigation — however, it could have some impact on prosecution issues. Notably — to what extent are known products submitted as prior art to the PTO? Are brochure disclosures sufficient?
Drei (can I shorten it wo disrespect to the better DriedMax) … there are two issues that are at conflict that are not “tech” v “pharma” issues, however… they inter-relate. Pharma has “guaranteed” high revenue vis-a-vis Medicare bill and a variety of peculairties with the US system for drug r&d — one agency to deal with in driving a lot of the effort (“NIH”); a strong third wheel support for drugs (aarp even with all those cute kiddie ads), et al… why am i not shocked a Bristish company not one of the many US-based companies filed suit …
the tech folks claim they sell tech (“innovation”) but still clearly sell goods and services — no one buys technology per se (kinda a 101 argument when you think about it) and tech companies deal with lots of government agencies and thus it appears to many folks that the “patents” are small trivial things that are added to the good or service already owned — the obfuscation in this bill has to do with the strong dependencies of many sili-valley companies on the big three — there are no wilson sonsini fights against microsoft anymore. however, there are no economically “bad” patents: the applicant pays his way and at the very least by publication reveal another viewpoint into a given art, however written or presented. the irony is that the patent bar essentially allowed this to happen (democrats voting against lawyers, the horror!). the copyright folks really taught the tch guys its okay not to be libertarian anymore — who could hate micky? and how much protection goes to copyright holders?
unemployment in europe — NOT poverty. we can debate UNEMPLOYMENT anytime …
caveman i have to agree with your *anything* comment with a caveat/example for a specific industry that is bi-polar with regards to patentz –cryptography. there are lots of rump sessions for which potential claim elements are thrown around but the actual motivation or even suggestion is rarely, readily attributable — multiple claims on the same invention perhaps or joint inventors (i am not sure). in fact, it seems that in these sessions there is more colloboration and likely attribution of the “reduction” AND “conception” — more focus on practical enablement versus marketing brochure spin. but terminology is always the issue that in my experience colors underlying meaning (ordinary or plain) with examiners … this is especially true in emerging arts where “winning the words” is likely a very strong strategy especially if the the terms are chosen in an appealing way (all the way through to the brochures and tape recording of pre-pared speeches) — the best story usually wins (and attracts the best attorneys, btw)
Ironicslip thanks. I contribute to this blog to incite revealing replies, like yours. As you say, “lawyering up” (new expression for me) is (unfortunately, you say, and I agree) the way to do business in USA. I particularly liked your insight that the number of lawsuits a company is resisting is a good measure of the success of its products. That makes sense, and goes some way to explain the contrary positions of pharma and tech on the Reform Bill. As to the “unemployment rate in Europe” what’s that then? Tell me about poverty in Europe and I’ll tell you about poverty in USA.
Sorry beirbelly,
I would say the most difficult part of citing ANY piece of art including a patent document is determining whether each and every element is disclosed or taught or suggested.
I believe that ANYTHING can be cited, such as a tape recording of a symposium, where the elements of the claimed invention are disclosed, taught or suggested. The bigger challenge in my opinion is determining and validating the effective date of the art. A brochure is great, but how can you validate the date when it was published? Even if you claimed to have picked up a brochure, having no publication date information, at a conference that was held on a particular date, without corroborating evidence, the brochure could be useless.
For example, even validating a Web based publication can be fraught with difficulty if the underlying document has no real publication date. Even if some random document on the Internet whose publication date is at best, right now, says that something was known “back then,” its value is exactly hearsay.
Where can the underlying article be found?
MaxDrei (how appropriate — how about “driedmax”)
what is cruel is the unemployment rate in europe.
what is fact is that lawyering up is the way to do business in the u.s.a, plain and simple. unfortunately, if you aint getting sued, you probably have nothing of value – the number of attorneys on retainers means more than the number of employees reporting to you … a lesson even europe must face with all of those pleasant private equity funds … and cheap chinese products to boot.
since it is apparent from your whimsical from europe we can see clearly now perspective, why bother badgering americans when all of the world’s companies litigate patents in the usa? not enough work for you?
maybe that is truly the only measure of fairness. to assert that a patent is *not* presumed valid is about as predictive as determining the value of a patent before it is actually subject to market forces (which means if it were known it could not have been novel and certainly nonobvious — it is reduced to the price which captures all information about the product as agreed by the transacting parties)
— you cant have it both ways. and, no soviet pricing scheme proved otherwise. makes use of a court to settle a last resort dispute truly silly only to 3rd parties, not the party that did invent first. and no, it is not a 2 by 2 matrix, it is a more like a nash equation given the very real subjective decisions that need to be made and the 50/50 shot at standing on appeal —
The take home lesson from this survey is that bleating about poor “quality” from ex Parte pre-issue PTO examination is exposed as a hopelessly inadequate remedy for the ills. In the real world, claims get exposed as invalid only in inter Partes proceedings, when for the first time the full potency of the state of the art stands exposed. To suggest that each patent to issue is somehow protected by a presumption of validity is a cruel delusion perpetrated by lawyer insiders on the lay inventor. Going to trial on an issued patent should be a last resort, when two parties both still think they can win on infringement and win on validity. In a properly functioning patent litgation set up, in the 2 x 2 matrix of possible results, the owner of the claim should win(its claim is not only valid but also infringed)exactly one time in every four.
The difficulty in citing products as prior art to the PTO (unless of course, they are your own) is that in most instances (and this includes brochures), it is next to impossible to determine whether each and every claim limitation is present in the proposed art.
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