Posted on July 17, 2008 9:37 AM |Permalink |TrackBacks (0)

By Philip L. Brooks[1]

The VP of Sales for your company just returned from the industry's top annual trade show in Las Vegas with bad news. In addition to manning the company's exhibit booth and meeting with clients in a private hotel suite, she took a quick spin around the trade show floor. To her dismay, she discovered that a company, which none of you had heard of, was demonstrating a device with features eerily similar to your most recently launched product. Although the VP had attempted to strike up a conversation with the person at the "new" competitor's booth, he clammed up when he saw the corporate logo on her nametag.

Now what...?

In 1998, Jeff Moore, then a law student at Franklin Pierce Law Center, conducted an informal survey of law firms and companies in which he posed two questions:

1.      "How does an inventor know whether his process or method patent is being infringed?"

2.      "Where can an inventor go to have his IP protected on an ongoing basis by monitoring for illegal use?"[2]

Moore's report included the following observations: 

"The offensive search for potential infringers is targeted at finding infringers that can be forced to license or pay damages. Once an infringer is located the patent and literature searches may still be required to defend the patent and encourage a settlement."

"Companies have mostly relied upon internal resources to keep up on technology and identify potential patent infringers. Employees know the business, the key players, the technology, and often spot competitors that are infringing on process patents."[3]

Mr. Moore's comment that internal employees know the market best and are usually a more efficient and effective source for tracking down potential infringers might have been true 10 years ago. However, in 2008, his rationale appears to apply only in a fraction of patent-infringement investigations. Indeed, many clients are not really focused on such monitoring activities in the normal course of business--they have too many other things to concentrate on. Outside experts with industry, product, or patent-infringement experience are able to access information sources that may not be available to internal employees. Remember how the trade-show booth attendant clammed up when he recognized a competitor? 

Nevertheless, corporate employees are critical to the process because they can provide the retained expert with valuable information regarding the company's products and the industry in general. They are also helpful in defining the ways in which the claims of the patent might manifest in the features of products that your company does not currently produce.

One of the valuable side effects of patent-infringement investigations is the ability to obtain competitive and market intelligence, beyond the evidence of potential infringement. This information provides your company with valuable data that can be used going forward in day-to-day business activities.

Today, the volume of information available to businesses is much richer than it was in the past. Pertinent data can be gathered by attending trade shows, speaking with such parties as former employees and industry experts, and conducting Web research. In 1998, many companies (even very large ones) often had fairly static Web sites that consisted of only a few pages of text. Today, businesses often maintain multiple Web sites that offer deep content, multimedia informational sources, and links to third-party sources that provide supplemental information. This trend toward increased availability of valuable information shows no sign of slowing.

Retained experts may provide a valuable service in assisting your counsel in determining the liability aspects of patent-infringement cases. Product searches and investigations to establish potential infringement of your company's patent portfolio are conducted by:  

• Identifying businesses in your company's market and nearby markets
• Investigating companies and/or products that potentially infringe your patent portfolio using a detailed methodology, incorporating the latest Web-search technologies
• Identifying products of these businesses with features/functionality that potentially infringe upon your patents' claims



• Legally collecting documentation of this potential infringement
• Obtaining brochures, white papers, user's manuals, press releases, product reviews, financial filings, and other product or corporate document
• Developing questionnaires in conjunction with counsel to elicit information, through interviews and/or Web demos, that is relevant to the patent claim
• Attending trade shows and industry conferences in order to obtain product information
• Acquiring products for further technical evaluation

In "Patent Searching an Effective Tool for Competitive Intelligence," author Vinod Singh makes a very good case for why patent searching should be left to the experts--professional patent searchers.[4]   He discusses detailed steps--at least 13--that he considers essential for a complete search. He also points out that a skilled searcher should possess knowledge of search procedures, database limitations, technical tools, and software.

An early step in Mr. Singh's search process involves recordkeeping. He recommends that interested parties "[r]ecord the search words on a page in a project notebook and add other words as they come to mind or encounter them in other patents. Usually the word list becomes separated into groups of words covering different aspects of the invention."

This is excellent advice. When using search tools, you may end up following a number of different and often convoluted paths. Documentation of the keywords is essential to enable the researcher to explore all avenues and to revisit pertinent URLs using other search engines and/or tools. Moreover, the terminology used with respect to certain products or technologies often varies significantly in different parts of the world. Sometimes the variation may be as subtle as the use of acronyms, rather than complete word descriptions.

Also, while your company may rely on certain keywords to describe an invention, an expert may know that other members of the industry use a variety of keywords. In some cases, the infringement may occur in industries with which your company currently does no business. The expert's knowledge of the keywords applicable to other industries may lead to the detection of infringing products that your internal team would never discover. It is important to make sure that all relevant keywords are incorporated in your search--individually and in different combinations.

Back to the trade show...

Attendance at trade shows is a valuable tool in the expert's arsenal.  In the course of my patent-infringement investigations, I have uncovered some amazing details on products at trade shows.  Presented below are just a few of the insights I have gleaned over the past 12 years:

•  In addition to obtaining informational product brochures and white papers, attendees have access to demonstrations, cutaways, or components of products. Moreover, although the practice is not widespread, some visitors take digital pictures of booths and products. Thus far, I have not personally observed exhibitors discouraging people from taking pictures. [5]
• Salespersons are often more open to discussing product details in person than they might be over the phone.
• Conversations with other attendees can be a great source of information.
• Examining the exhibitor list before the show begins enables you to maximize the time spent at the show and to check out all companies that are of interest to you. In one trade show visit, my primary focus was on a specific company and its customers' booths. However, while reading the materials ahead of time, I noticed several businesses that were competitors to my target company, and I decided to stop by their booths. During the course of that show, I discovered eight to 10 competitors that had the potential of infringing upon my client's patents, and I subsequently shifted my primary focus to those entities.

Be sure to consider the role that an expert can play in your next patent investigation. You may derive significant value by retaining an expert to develop an ongoing infringement-monitoring program to protect your company's patent portfolio on a long-term basis. Having invested in the patents, you realize their true value only when you enforce those patents or seek out potential licensees.

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