CLIENT SUCCESS

 PRIOR ART SEARCH: COPPERPOD HELPS NY LAW FIRM FILE INTER PARTES REVIEW PETITION

Challenge

A New York law firm engaged Copperpod IP for a prior art search to identify patents or printed publications that invalidate the claims of a subject patent asserted against their client. The subject patent disclosed a method for wirelessly distributing one or more images from a capturing device to a receiving one, wherein the receiving device automatically filters the receiving images based on a particular topic, theme or individual.

 

Solution

Copperpod reviewed the patent in detail to understand the novelty as well as how the technology in the subject patent may be implemented or used in the products. 

 

Copperpod used patent search databases (e.g. Orbit Intelligence) to perform complex searches (including use of wildcard expressions and operators) based on the keywords relevant to the novelty of the subject patent. 

 

Our experts also performed NPL (Non-Patent Literature) searches in all major and reliable databases (including but not limited to any type of literature such as research papers published in academic journals or presented in any conference, product user manuals, user guides and/or product application documents, and Non-Digitized NPL (such as offline literature such as magazines, newspapers, books, pictures, academic journals and/or user manual)) to deliver the best results.

In addition, our experts used a number of innovative approaches:

Classification-based search: Identifying key patent classes (preferably, IPC classifications due to their global applicability) and limiting patent search to those classes increases the odds of finding the best prior art within that final set. 

Citation-based search: Backward citations as well as forward citations can reveal other prior art on a deeper second-level analysis:

Backward Citations of Backward Citations 

Other Forward Citations of Backward Citations 

Other Backward Citations of Forward Citations

Inventor-based search: One or more inventors named on the subject patent may have published prior art that ends up invalidating the claims of the subject patent. Combined with the citation traversal – where other work attributable to the inventors named on backward citations and forward citations can also reveal important prior art.

 

Copperpod also consulted with academicians and industry experts who were working on the technology around the same time when the subject patent was granted. 

 

Read our article “New Approaches to Prior Art Search” to know more about our no-stone-left-unturned approach to prior art searches.

After a deep literature study of wireless transmission and filtering of images, our experts found 10 similar patents talking about the image-capturing equipment consisting of a wireless transmitter, wireless receiver and a processor used to filter the photographic images captured. We created a result-feature matrix, vital for the report, which proved to be extremely beneficial while understanding the relevancy of each prior art with the claims of the subject patent. Up to this point, our team had gone through thousands of related patents that gave us and the client the required confidence for further proceedings. The final report also included claim wise mapping of the subject patent with the highly relevant prior art.

KEY INSIGHT

Web archives can help immensely in finding literature about old discontinued products that may constitute good prior art.

KEY INSIGHT

A result-feature matrix can not only help prioritize prior art references, but also streamline selection of prior art combinations for  §103 obviousness arguments.

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Success

 

Using Copperpod’s analysis and results, the client successfully filed an Inter-Partes Review (IPR) petition with the Patent Trial and Appellate Board (PTAB). The petition was subsequently instituted for the key claims asserted against the client.