• iRunway
Prior Art Search & Patent Invalidity Analysis

Be it to validate the enforceability of your patents or to invalidate one more claims of a patent as your first line of defense when confronted with an infringement allegation – the critical success factor in getting the search right is to understand the technology disclosed in the patent, scientific concepts and terms used in the patent and the claim limitations.

Experience in Invalidating Patents

Over the years, iRunway has worked in over 6,500 prior art and invalidity searches. Our consultants have a strong track record of success in prior art search projects:

  • 85% success in finding strong §102 and §103 prior art references
  • In all defense matters, prior art found was used directly in the final expert invalidity report or re-examination filing.
  • Early resolution and lower cost of settlement for clients based on the strength of prior art.

Our Approach

We search for prior art from diverse sources such as – patents, published patent applications (across countries) and various non-patent literatures such as academic journals, books, product literature and other online and offline publications. At iRunway, we believe that the context of the search is more important than the search process itself. As a practice, our consultants -

  • Critically examine all embodiments of the patent to identify various alternate applications that are part of the invention and also identify those that have not been disclosed.
  • List claim limitations that are difficult to find during prior art searches and combine multiple patent references to prove non-obviousness with ease. And interpret limitations reasonably and broadly to fully understand what to and what not to include.

Industry Context

Search & Analysis

Understand technology evolution in a specific sub-domain

Identify hot zone → specific timelines, geographies, academic research/ breakthrough

Patent analysis (claims, specifications, file wrapper, litigation history...)

Prior art search (keywords, search strings, assignees, inventors, citations)

Analysis & report preparation

Search Techniques

Citation Analysis → Search & analyze network of citations (both backward & forward references) & identify relevant patents within the technology landscape based on priority date

Semantic & Linguistic Search → Advanced Boolean search strings including synonyms of keywords for better coverage

Attribute Clustering Build Assignee-based & Inventor-based patent clusters to ensure exhaustive coverage of the patent landscape and find high-relevant prior art

Case Studies

iRunway consultants have often used unconventional information sources to find strong prior art references and bolster client’s search results.

Client: A fortune 100 company

Domain: Memory connectors

Insights Delivered:

  • Tangible invention related to memory configuration in computers
  • Searched eBay auction & product images to find information on rare & outdated products
  • Identified earliest laptops (including competitor’s) based on same technology
  • Procured the prior art from eBay (laptop configuration) to invalidate the patent

Client: A law firm based in MN

Domain: Bio-medical

Insights Delivered:

  • Identified hot-zone → significant academic research and advancement in relevant technology in Russia during 1960s (priority date – 1967)
  • Prepared relevant search strings & hired translators to find high-value prior art references from Russian literature & journals
  • Successfully filed for patent re-examination based on prior-art found

Client: A law firm based in IL

Domain: High power batteries

Insights Delivered:

  • Invention → batteries that could run hand-held tools with certain power specifications (priority date – 2003)
  • The team found strong prior art reference from an offline technical journal in the library of Indian Institute of Science (IISc) published during a conference on battery, applications and advances in 2001