Does willful blindness underpin your IP searching strategy?

October 17 2019: A judge in the case of Motiva Patents, LLC v. HTC Corp has just ruled that avoiding the review of relevant patents was ‘willful blindness’ and implied ‘a reasonable expectation that discovery will reveal evidence’,

Further, the court held that:

‘Motiva has alleged that HTC has such a specific policy—a policy prohibiting review of patents—Motiva has plausibly alleged that HTC was wilfully blind’

‘Similar to the allegations related to the existence of HTC’s policy, these allegations plausibly suggest that additional discovery will reveal evidence in support of Motiva’s claim. …...Accordingly, Motiva has adequately alleged wilful blindness on this factual basis as well.”

So the ‘Ostrich’ approach of ignoring the patent landscape in the hope that it is going to ignore you is not going to cut it any longer.

This is an important ruling with the following implications:

Freedom to operate searching

Clearly there is now an expectation that the sale of a new product in the US is accompanied by a reasonable degree of freedom to operate searching.

Invention Disclosure Statements (IDS)

Personally I have had discussions with attorneys where the attorneys have indicated that they do not want to know too much about the prior art for patents they are responsible for. But in the light of this ruling, a new approach may be required, one that goes beyond any form of wilful blindness. Forewarned is forearmed.

Inter-Partes Review (IPRs)

This also raises a question regarding Inter-Parte Reviews (IPRs) before the PTAB. A colleague has suggested that prior to the American Invents Act (AIA), it was reasonable to assume that a patent granted by the USPTO was valid and enforceable, who had conducted a thorough examination as designated experts.

After the AIA, this assumption is now questionable, and arguably it is a duty of an attorney to question this assumption if they are asked to consider litigating a patent, even if the patent is owned by their client.

How Ambercite can help with all of the above

Patent searching can be complex and time-consuming. Any patent granted by the USPTO has presumably been thoroughly searched by USPTO examiners, and in many cases examiners from other countries as well. All of this suggests just simply running another conventional keyword and class code search may not immediately find anything that the US patent examiner has not already considered.

Ambercite however does not just run another conventional keyword and class code search. Instead, it applies a proven AI algorithm to a database of over 100 million patents and 175 million patent citations to find the most similar patents to one or more starting patents. As such, it can find patents missed by conventional searching.

Using Ambercite in practice

When reviewing existing patents, you can do one or both of the following:

1) Simply enter the patent number

You can also apply a suitable date filter, and Ambercite will quickly return both known patent citations, and more importantly ‘unknown’ patent citations.  

As an example, consider the query below, which is looking for prior art for patent US9,000,000, which claims an invention for reusing rainwater as windscreen wiper fluids:

An example of an unknown patent citation is shown below - this can be immediately useful as a new prior art document worth considering

Even a listing of known patent citations can help as these citations are ranked in terms of predicted similarity to the patent you are searching on. This can provide a fresh perspective, especially considering that it is known that examiners will often ignore any patents put forward by the applicant as part of an IDS - yet these patents can still be relevant.

2) Or you can also enter a list of relevant prior art patents that you may be aware of, as shown below. 

Again the search process is very simple, and Ambercite will return a list of similar patents, in ranked order of predicted similarity.

Would Ambercite help you with your due diligence requirements?

Well, this is ultimately a matter between you and your insurer, but Ambercite does provide a very simple and fast means of running a due diligence process and an approach that goes beyond the simple ‘relying on the patent examiner’ approach.  Or running another keyword based search, that may end up with the same results as earlier keyword based searches.

And returning to the theme of wilful blindness not being a defence to wilful infringement, performing such a search on your patents may help manage your FTO risk for any products based on patents you may be filing. Of course, a full Freedom to Operate search will be more complex than this, but Ambercite can be a very cost-effective part of this process. 

Do you want to have Ambercite to help you with your patent searching?

Contact us via the link below, and we will happily demonstrate just how fast and simple it can be to strengthen your due diligence process.