Analysis of Patent Search Results

• Author: Austen Zuege
• Pages: 293-327

7

Analysis of Patent

Search Results

This chapter will help you learn:

• The role of business considerations in determining the scope of

patent analysis

• The process of analyzing patent search results to identify possible

infringement risks

• The types of expertise required to analyze patent search results

• How to use patent analysis to check the quality of a search

• How to assess the quality of a patent analysis

Patent analysis is the process of assessing the legal scope of a pat-

ent and its relevance to a particular proposed product or technology.

In the context of a freedom-to-operate (FTO) study, patent analysis

includes an initial risk assessment of possible patent infringement,

which can trigger further investigation, analysis, and risk manage-

ment tasks that are addressed in detail in Chapter 8—everything from

opinions of counsel to engineering design-arounds to legal actions

challenging validity or patentability. Many stages of an FTO study

involve activities that could be generally characterized as including

some form of analysis, including project planning, patent searching,

and risk management activities (discussed in preceding chapters).

The present chapter, however, will focus specifically on patent anal-

ysis with the goal of identifying when there is a noteworthy risk that

a proposed product might infringe an identified patent. This analysis

293

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294 Patent Freedom to Operate Searches, Opinions, Techniques, and Studies

is about understanding patent search data to find the most relevant

information in order to draw conclusions crucial to the ultimate objec-

tive, such as business planning that prompted the FTO study in the

first place. Put more simply, “analysis” of patent search results is

about separating the wheat from the chaff, so to speak, in an intelli-

gent and reliable manner.

7.1 Overview

Every FTO study begins with the identification of a product or

process of interest—a proposed product. Most FTO studies require

at least some patent searching. As discussed in detail in preced-

ing chapters, different project goals may inform a variety of pat-

ent search methodologies. Whatever the nature of the search, and

whether these searches produce hundreds of relevant results or

only a handful, even the most precise and thorough search is of

limited use until its results are properly understood. For this rea-

son, the analysis of patent search results is a vital part of every FTO

study.

Although the analysis of FTO search results is fundamentally

a legal task, as discussed in Chapters 3 and 4, the project initiator

must determine as a threshold issue what kinds of risks the FTO

study should be most concerned with, and what types or levels of

risk are acceptable. These determinations must be guided by busi-

ness considerations, and necessarily delineate the FTO analyst’s

task. The project initiator may only be concerned with patents held

by businesses that actively practice their patents, for example, and

not with nonpracticing entities (NPEs)—so-called “patent trolls”—

that obtain or collect patents for lawsuits, but do not participate in

the industry of those patents. In some cases, project initiators may be

concerned primarily with a handful of direct competitors, and may

consider patents held by other parties to pose slight or acceptable

business risk, whatever the theoretical scope of those parties’ patent

claims. In general, no FTO study can foreclose all lawsuits for pat-

ent infringement. It is not possible for any analysis, however thor-

ough and incisive, to prevent a patent holder from filing a seemingly

groundless legal claim or a judge/jury from finding infringement.

At the very minimum, FTO analysis should seek to identify patent

references that might survive a motion to dismiss if asserted against

the project initiator.1

1 The legal standards for a motion to dismiss are discussed in Chapter 1, and surviving

a motion to dismiss requires that a complaint state a “plausible” claim for relief. See,

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Chapter 7: Analysis of Patent Search Results 295

In practice, a higher threshold may be desired, or additional require-

ments may be imposed as described above, to restrict detailed analysis

and risk management processes to patent documents that pose both

a theoretical legal risk and a substantial business risk. Although busi-

ness considerations and legal analysis are both important to the anal-

ysis stage of an FTO study, FTO analysts must be careful not to allow

business goals to influence their legal analysis. It is entirely appropriate

for business considerations to define the scope of inquiry of FTO anal-

ysis based on a weighing of expected litigation risk against the costs

of more inclusive criteria for FTO relevance. An FTO analyst may, for

example, “clear” a patent (i.e., determine that the patent requires no fur-

ther investigation) because it poses an acceptably low risk of litigation,

based on the project initiator’s specified relevance standards. It is illegit-

imate, however, for business considerations to color an analyst’s legal

judgment—as in determining whether a proposed product infringes a

particular patent—such as due to pressure to get the “right” business

result in spite of applicable legal standards. Legal and business analy-

ses should be conducted separately as much as possible.

The claims of a patent define the scope of legal protection and

therefore delineate the bounds of what infringes that patent. Accord-

ingly, while searches may identify patents based on the entire con-

tents of the patent document, it is the claims that determine whether

the patent poses a legal risk to the proposed product. For instance,

a given patent may disclose embodiments in its specification or fig-

ures for which claim coverage was surrendered during prosecution,

or simply was never pursued, meaning that despite the disclosure

the patent does not exclude others from practicing the disclosed sub-

ject matter. Patent analysis, therefore, begins with a thorough under-

standing of a given patent’s claims. By understanding the meaning

of a patent’s claims and how they compare to the product of interest,

FTO analysts can distinguish between patents that pose a real litiga-

tion risk, and patents that are merely superficially related or similar

to the product—perhaps relevant for patentability analysis or busi-

ness intelligence but not for FTO purposes. During this stage of anal-

ysis, patents identified by searches can be categorized into groups

identifying the next necessary course of action, if any, to clear each

reference as a potential risk.

e.g., T S C W G  P L. B P, T

S C C  P L B P: H-

 P S C, P C V 2–4,7–14 (May 2016),

available at https://thesedonaconference.org/download-pub/4685.

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