Archive for the ‘IP history’ Category

Google Patents “Prior Art Finder” Is An Infringement Location Tool

16 Aug

New tool available from Google Patents that not only helps locate prior art but also helps locate infringements.

Google has added to each patent overview in Google Patents (see for example 6,425,764 at , a blue button labeled “Prior Art Finder”, which appears to be a search tool that searches Google Scholar, Google Patents, Google Web, Google Books and Google People databases to try to find references that use the words of the patent claims in the patent. By default this gives the top 10 references from all those sources. Very cool, right? It arguably does for free in seconds what an invalidity searcher would charge thousands of dollars to do in a few weeks. The Geeks who have noticed it so far have touted it as a new way to fight patent trolls by cheaply locating patent killing prior art.  And, it will surely do that in some situations.  Patent defense attorneys will certainly welcome this new tool, as they and their engineers can pour over this stuff and quickly locate significant prior art to use in invalidity arguments and/or invalidity opinions. Even though I do more plaintiff work, I also welcome it as it allows me to play devil’s advocate and locate those things I might expect my opponent to assert in arguments for invalidity. I also welcome it on an objective level as being an objective “truth finder”.  This tool is arguably neutral as to whether what it finds in invalidating art, as it just apparently searches for things in a given time period that seem to be similar based on the words of the patent claims in question.

As a plaintiff’s attorney in infringement cases, I notice a neat and perhaps unintended capability of this “Prior Art Finder”. As the saying goes, “what infringes if later, anticipates if earlier”.  The Prior Art Finder has user adjustable search fields for the beginning and ending date of the search it makes. Again referring to 6,425,764 (Lamson VRIT patent) when we click on the Prior Art Finder button we get the following screen in which you will see on the left the heading “Custom Date Range” which can be adjusted. For example with 6,425,764 I know the priority date is the provisional filing date of 06/09/1997 rather than the non-provisional date 12/12/1997 listed. Apparently the Google programmers realized this sort of situation and made the date range fully adjustable.  However, here’s the really neat twist for patent enforcers – if you make the starting date the issue date of the patent and leave the ending date blank or today, you get an infringement search since now the “Prior Art Finder” becomes a subsequent art finder.  So in my example, doing that produces a list of possible infringements. Note it can also be customized by clicking on one of the boxes at the top of the page, say Patents, to just list patents or to Scholar to just list scholarly articles, etc.  As the attorney for 6,425,764, that is a great tool I will certainly use to advantage.

L2BL (lesson to be learned) What anticipates if earlier infringes if later.


1790 Patent Act – A First to Invent Registration System with Conditional First to File Patents

20 Jun

The Act of 1790 was a registration system with only a CONDITIONAL first to file award of patent.  The patent registered could be invalidated under Section 5 of that act by showing that the patentee was not the true inventor. Then, the true inventor could file and obtain the patent under Section 1 of the act. In other words, it actually was a first-to-invent system.

It is incredibly disingenuous to use that to argue for an UNCONDITIONAL first-to-file system such as in S23 or HR1249 where the patent can never be invalidated if the first to file is shown not to be the first in fact.

I am in favor of a conditional first to file, a registration system similar to that of the 1790 act, and that type of registration system would appear to be consistent with the inchoate right of ownership of inventors stated in Stanford v Roche and the 5th Amendment.  In fact, I have been urging such an act for several years, one I call PLEAS (Patent Litigation Expense Avoidance System)


Zow, the nerve of these cons from China – stealing a billion dollar trade secret from St. Jude’s

28 Apr

Zow!, the nerve of these cons. A 2.3 billion dollar trade secret judgment against a Chinese trade secret thief Zou and his company Nervicon, who stole a billion dollar trade secret from, get this, St. Jude’s Medical.  No amount of money is enough punishment for that, but $500M in punitives is a goodly amount.