Debunking Claims of a Composition PatentInvalidity Search for a Pharmaceutical giant
One of our new pharmaceutical client was struck in litigation for infringing on someone else’s patent rights. The client came to us with an invalidation search, As the client’s product was a literal infringement on the subject patent, a strong prior art was required immediately.
The client already had the search results from couple of the Patent search firms but they were not really satisfied with the prior arts they had. They turned to ExpertLancing for a second opinion search.
The client wanted ExpertLancing to perform an invalidation search on independent and dependent claims of the given subject patent disclosing a polymer composition of desired set of properties. More specifically, the patent was talking about a specific enzyme for achieving polymer composition with desired set of properties. The main challenge was that the requirement was urgent and the client had already got these searches conducted from another competitor firm; however, no satisfactory results were obtained. So, it became important for us to find best prior art that could save our client from litigation.
Now, before starting an invalidation search a lot of ground work is required as these are high stake searches and beyond doubt, we know that to find the truth one must move the mountains. In this case we got an important lead, while checking the file history of the subject patent. We found that the examiner provided two relevant prior arts showcasing all the properties of the polymer claimed by the subject patent. However, to escape those rejections applicant amended the independent claim of the subject patent by adding additional properties to the independent claims that were present earlier in the dependent claims. Applicant also argued that the reason for those set of properties was use of a specific catalyst disclosed in the dependent claim of the subject patent. It was observed that after that amendment and argument the subject patent was granted.
We tried to use this lead and started building different strategies to reach to the required result. We started first with searching patents (using keyword, classification, citation, inventor and assignee based strategies). We observed patents disclosing polymer composition either with all the properties but different enzymes or with same enzyme but not all of the properties present in the polymer composition.
However, there was not much patent literature and most of the patents were motivational. Soon we knew that searching patents is going to be a futile effort and quickly moved our searches towards finding non patent literatures. Considering the initial effort already invested, we were sure that a cutting edge search is required.
Now, while looking for non-patent literature there is always a great possibility that the inventors might have published their research work during the academic years as most academic mandate paper publication in their curriculum. Also, mainly due to the lack of awareness about intellectual property protection most scientists tend to spill the beans too early.
Keeping the fact in mind we began with the non-patent literature search and implemented name searches for all the inventors of the subject patent.
Guess what, we came across a thesis published two-year before priority date of our subject patent with one of the inventor as an author of that thesis. Further, the thesis was done to find out the polymer composition with best properties when treated with different enzymes and under different environmental conditions. In one such experiment a polymer composition along with desired set of properties treated via specific enzyme was disclosed.
Voila. This information was exactly what we were looking for! One of the inventors of the subject patent turned out to be a “Black Sheep” and disclosed the work years before the priority date of the subject patent. And we were able to break independent as well as dependent claims of the subject patent. That was a great find.
The non-patent literature forms an anticipatory prior art that we gave to the client along with other results as motivational prior arts. The client was very satisfied with the quality of the search results and said that most of the references provided could be used for litigation. The NPL document provided was also helpful to invalidate the inventive step of the subject patent. This was all done on a very short notice, and completed within 4 days.
What it teaches us is that “There is always a way, we just need the zeal to figure it out”