Prior art research is playing an increasingly important role for companies with potential exposure to IP litigation. Companies are spending millions of dollars in legal expenses to understand the true value of patents. In some cases, entire industries are threatened by growing litigation from non-practicing entities (NPEs). Look no further than the now infamous Lodsys lawsuit filed against the App Developer community, including Angry Birds developer Rovio, which is facing a much bigger threat than pesky evil pigs. It is essential that these companies perform the most complete prior art search to defend in this litigation.
Crowdsourcing for prior art has recently emerged to revolutionize the patent research space and overcome the limitations of traditional search techniques. Traditional searches generally involve Western-language based digitized searches. For foreign non-patent publications, only the abstracts are digitized for inclusion in Western-language based digitized databases. The research thus misses the full text and footnotes. It also is important to note that, for digitized publications, critical content is not digitized – such as tables, figures, graphs and photographs. In addition, whole classes of publications besides historical publications (e.g., out-of-print books) are not digitized. These include editorials, business materials, physical products, out-dated manuals on products, software, and standards meeting notes.
In the case of the Lodsys patent lawsuit, the App Developer community itself is being encouraged to band together in an effort to uncover any and all information around these patents to support Angry Birds and all the other defendants.
For the Angry Bird Enthusiasts:
During the past 2½ years, Article One has learned lessons from our community of talented prior art researchers. Here is a short list “translated” into Angry Birds-ese.
What lessons can the prior art research crowd teach Angry Bird fans?
Lesson 1: Diagram each claim and be sure to include every element. Just as we can’t remove the helmet from the pig, we can’t leave out even one element of the claim. Review the filewrapper, or at least the Notice of Allowance and understand why the elements were included. This means no Monday morning quarterbacking of the claims – the elements are what they are.
- Translation for AngryBirders: Review the structures present in each level of the game and determine where the pigs reside.
Lesson 2: Read the claims. Make sure you understand the terms as used by the patentee. Remember, each patent applicant is entitled to define words, or to be her own lexicographer. Develop an ability to trace and relate the patentee’s terms to those used in the particular technology, past and present.
- Translation for AngryBirders: See what birds are provided for the level and determine how you use each bird’s special ability.
Lesson 3: Spend some time doing background research. Ask – how, why, what, where and when. Don’t forget – finding a current article (“walk-through”) that spells out the solution can provide great suggestions for search strategies to find earlier dated evidence. Build a timeline that provides who the players were in developing the technology (including failed attempts); what other solutions were proposed; track early players in the field (identify mergers, spin-offs, university tech centers, etc.); and possible standards relating to the technology.
- Translation for AngryBirders: Use “HINTS,” online suggestions from the community of Angry Bird lovers, and walk-throughs!
Lesson 4: Reassess your work. It is very easy to get caught up in the thrill of the search and find that you have followed a path that moves away from the goal. Best practice is to periodically review where you are in the search against the claims or items of interest.
- Translation for AngryBirders: Replay levels to hone your skills (useful strategy when you are stuck on a level – go back one level and practice).
Lesson 5: The strongest prior art collections are built through an iterative process. Do research, try another strategy, compare to the claims, readjust and dive deeper. Identify early products in the field and explore those. Explore analogous as well as non-analogous fields of technology. Read later dated articles by the inventors, they often describe what they were thinking during their work. This can provide clues for how to adjust your research approach.
- Translation for AngryBirders: Try different approaches – often changing the trajectory of Yellow Bird changes the angle of the approach so you can knock down the structure.
AND the most important lesson:
Lesson 6: Participate. With so many players bringing a different “angle” to this human search engine, the approach produces not only the highest quality results but identifies the best persons to ask.
- Translation for AngryBird-ers: There are always hundreds of pigs, pumpkins and plump, pulverizing birds!
With the crowd hard at work analyzing the patents, individuals may wonder how often are patents studied on Article One deemed to find an invalidity path (where that objective is presented in the search). Duke University Professor of Economics, Wes Cohen, has analyzed the Article One Partners crowdsourcing platform and client feedback to identify the impact of crowdsourcing for prior art. He found based on client feedback that in 57% of Article One’s invalidity searches, crowdsourcing uncovered new paths to invalidity compared to traditional prior art searches.
The question may arise – what if the result of crowdsourcing is less than the proverbial “smoking gun,” can it place the App Developers at a disadvantage in court? Case law indicates that the answer is no. Last year, in a patent litigation brought by Personal Audio LLC, the plaintiff attempted to argue that their patent was valid based on crowdsourced research and to seek discovery on this basis. Personal Audio lost on both counts, with federal Judge Miriam Cedarbaum concluding, “eliminating a negative doesn’t show validity” and commenting on the patent owner’s approach with the statement “that’s what I call desperation.” Transcript of Oral Argument and Decision at 12-13 and 14, Personal Audio LLC v. Sirius XM Radio, Inc. et al, No. M8-85 (S.D.N.Y. Nov. 2, 2010).
Angry Birds has highlighted that patent lawsuits can be costly, which is why there is no substitute for speed and global reach when conducting patent research. The crowdsourcing model is a powerful way for communities to combine their efforts around a cause that affects everyone.
Anyone can participate in crowdsourcing to find prior art to challenge overbroad patents. Assistance from a diverse set of citizen researchers can be critical, particularly in the case of App Developers, many of whom are truly small businesses, micro-businesses or even individuals who could not otherwise tap into such a widespread knowledge base. The App Developer cases represent a new opportunity for communities to collaborate and provide support towards the same goals.
Due to an increase in litigations, App Developers are forming their own communities that can assist in crowdsourced research. One example is a group of developers who have banded together to form Appsterdam. Mike Lee, co-founder of Tapulous, an App Development company, founded the Amsterdam-based group. While Mr. Lee is fostering the growth of a cohesive App Developer community, Appsterdam also intends to raise money for group legal counsel and generate support for developer-friendly legislation around the world. The result of this collaboration is the Appsterdam Legal Foundation, which plans to educate App Developers regarding the NPE risk, and to directly fund the legal defense of its members.