The trouble with patent search firms
John Holley is a seasoned patent litigator at Spencer Fane, with over a decade of experience representing the most innovative companies in the world. John’s defense practice typically involves engaging third-party search firms to perform invalidity searches. In John’s experience, search firms usually identify relevant references that teach most of the elements in the patent in question, but there’s often one key feature missing from their results list that can end up turning a case.
“...search firms usually identify relevant references that teach most of the elements in the patent in question, but there’s often one key feature missing from their results list that can end up turning a case.”
Search firms can miss critical features
John was representing a Fortune 500 company hit with sweeping allegations of patent infringement by a non-practicing entity (NPE). The NPE launched similar suits against most other companies in the industry; all of which were represented by different patent counsel, who each hired separate third-party search firms to invalidate the asserted patents.
Between the parties, significant resources were spent on search firms, not to mention countless hours of attorney time reviewing the results. The search results were not perfect and arguably lacked the inventions' critical feature.
A colleague encouraged John to try NLPatent, a new AI-based search platform that allows users to copy-and-paste full sections of a patent they’re seeking to invalidate into the tool to form the search parameters (rather than relying on keywords). He was curious to see what a new approach leveraging artificial intelligence might uncover that traditional approaches did not.
NLPatent quickly found art with key missing feature
Not only did NLPatent instantly find the “best results” identified by the search firms, it also uncovered new highly relevant references that were previously overlooked. To John’s amazement, these references contained the key feature absent from the search providers’ “best art,” all found within less than an hour of searching. John and his colleagues used the references uncovered by NLPatent to file an IPR, which was quickly instituted by the PTAB.
“Not only did NLPatent instantly find the 'best results' identified by the search firms, it also uncovered new highly relevant references that were previously overlooked.”
When the NPE saw the new art, it not only dismissed the infringement suit, but also dropped a number of other matters involving related inventions. It was clear to the NPE that their patents didn’t stand a chance in view of the killer references uncovered by NLPatent. This marked a major victory for John’s client and all other operating companies involved.
Joseph Turcotte | Associate Director
How NLPatent empowers non-specialist law students to provide professional IP counsel to researchers, inventors, and innovators in the Canadian community.
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