Invalidity Searches for Patent Owners

At SPSG, we understand that patent owners benefit from invalidity searches prior to asserting their patents in many ways. Patent owners may adjust their strategy based on the strength of the patents. They may also amend claims to distinguish over particularly troublesome prior art. SPSG adapts our search process to accomplish these goals. For defendants, SPSG searches for two or three references that best invalidate the claims with minimal explanation necessary to make the references read on the challenged claims. For patent owners, however, SPSG uses more creative search techniques to anticipate what prior art both the most and least sophisticated defendants may cite against the patents. The goals are to prevent patent owners from being surprised by a creative interpretation of prior art and to prevent late notice of crippling prior art.

Late notice of prior art potentially results in the patents being worthless. During the course of litigation, many defendants will conduct extensive invalidity searches on patents asserted against them. They sometimes find crushing prior art that renders the patents entirely invalid. If defendants choose to file post-grant proceedings with the Patent and Trademark Appeals Board (PTAB), patent owners’ defenses are limited since the PTAB rarely allows amendment of the claims to distinguish over the cited prior art. Consequently, late notice of such prior art is particularly devastating for patent owners since they cannot amend to distinguish over the prior art and, therefore, the patents are likely to be found invalid.

Patents owners benefit from conducting their own extensive invalidity searches prior to asserting their patents by being able to anticipate what prior art will be cited against them. An early search allows patent owners time to amend claims and prepare defenses to invalidity challenges. Additionally, since the claims have yet to be interpreted in claim construction, we are careful to search for prior art that reads on multiple constructions of the claim. As a result, we return a broader range of prior art to patent owners than we do to defendants so that they may have a complete view of the strength of their patents.

For more information, please feel free to contact our offices at 626-432-7292 or email me at stacia.stokes@shermanpatentsearch.com.

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