A Quality Insights Tip

Using the Search Function to Uncover Potential Prior Art in Litigation

September 19th, 2019 ‧ 3 min read

In a previous article, we took a closer look at two syntax operators that don’t receive all that much attention but can be very important for improving your patent search capabilities. Now, we would like to focus on something else that often gets overlooked—the Search Function in Quality Insights—and examine how it can be a valuable tool for finding possible prior art references in patent litigation cases.


A QI Tip

Without a doubt, Quality Insights (QI) is a powerful one-click solution that can deliver a whole range of useful data, including a comprehensive overview of a patent as well as the prosecution history, post-grant proceedings history, family status, and prior art status, among others.

Our seasoned experts shared a tip for locating a patent’s possible prior art references simply and quickly—the Search Function.

To explain, after QI has automatically located the patent’s abandoned family members, this function can be used to quickly and conveniently search for their prior art, which can be used as a possible weapon to kill the patent at issue.

Since QI is one of the only products on the market to provide searchable file wrappers via digitization through OCR processing, users no longer have to spend hours searching through dozens of documents.

Instead, with this tip, they can simply use QI’s Search Function to find the patents that were used to challenge the abandoned family members.


A Real-World Example

Let’s take a closer look at the recent “GF v. TSMC from a Patentcloud Perspective” article that used QI to provide insights into the case.

With just one-click, QI delivered a comprehensive overview of the validity of the patents in this case.

Though we already knew from Litigation Daily that there were no rejections or PTAB invalidity records for the ‘357 patent in the case, the Overview tab enabled us to thoroughly examine this patent’s file wrapper data:

By looking at the Family Status tab, we can identify any abandoned family members, which is a great strategic move when preparing an Inter Partes Review or an invalidity action proposal.

Although the records of ‘357 may look clean initially, QI has identified the following abandoned family members: EP1787331A2 and US20070290250A1:

Now, let’s take the ‘250 patent, for example. Under the History tab, we can identify the reason for application abandonment: Abandoned — Failure to Respond to an Office Action:

Similarly, we can uncover the reason for the abandonment of EP1787331: the application was rejected by the EPO examiner:

As we mentioned earlier, knowing which prior art references were used against the abandoned patents is important.

Returning to the Family Prior Art tab for patent ‘357, we can continue to the next section to uncover more information from the list.


The QI Search Function in Action

First, let’s select the Backward Citation tab by operating the drop-down menu on the left: this list offers an overview of all the prior art references of the family members of the patent at issue, including the abandoned ones.

Here is where the Search Function tip comes in.

If we want to focus on the prior art references of the abandoned patents, we can simply input “aban” into the search bar to filter out the prior art references that we need:

Under the Reference column of the newly-filtered view, we notice again the abandoned family members EP1787331A2 and US20070290250A1: a quick look on the left, under the  Patent No. column, we can uncover their prior art references.

By clicking on the patent numbers, we can further investigate their ins and outs using Patent Search.


An Effective Function in a Powerful One-Click Solution

As the real-world case above shows, QI is very efficient for quickly providing important insights into this patent litigation case.

And as this article has shown, QI’s Search Function can also be very effective for finding prior art for the patents at issue for this case—try it for yourself here or request a demo.

By enabling IP professionals to understand the essence of a patent itself, QI continues to play an increasingly important role in patent litigation, since it can make it possible for a defendant—like TSMC in the case above—to develop an optimal strategy and response in the earliest stages of a case.


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