By Geoffrey Mason
Most patent litigators have won a case due to key documents that they were aware of and opposing counsel was not. File histories present more opportunities for wins like this than most attorneys realize. In my 15 years of practice, I have witnessed billions of dollars worth of patents wiped out due to missing documents from file histories. I want to share the lessons from my experience and explain how to win cases with patent file wrappers.
A majority of patent litigators mistakenly believe the best source of case winning key documents is their document review. In fact, page for page, the most likely source of case winning key documents is not your document production but rather your patent file histories.
You win cases with file histories when you are certain that they are complete and accurate. So certain that you can affirmatively rely on the absence of key documents from your file histories. In many cases your opposing counsel won't see this coming at all.
Thats what happened to me in a blockbuster pharmaceutical patent litigation, where opposing counsel asked our prosecuting attorney during her deposition to find a key request for a three month extension of time. She couldn't find it. And no one picked up on this before hand. The associate who'd read the file for witness prep thought the absence of the document was just a logistical oversight. It wasn't. It was a major problem with our case. Mere days after that deposition, we filed a petition to revive from abandonment patents covering billions of dollars of sales.
I was fortunate to have learned early on in my career that an incomplete file history is both very common and a devastating weapon when you take advantage of that fact. After fifteen years of doing this, every case I've been involved in had at least one incomplete file history. The key thing is, that's true of opposing counsels file histories too. And if you're the side with the better file histories - you will have many opportunities to win the other side won't have.
Why does it happen so often? Because my fellow prosecutors and litigators don't hold file history vendors to the same level as we hold our e-discovery vendors. Our e-discovery vendors are carefully vetted and validated by attorneys, and approved by partners. Indeed, many times our e-discovery vendors employ attorneys. For all that, e-discovery vendors handle documents that are no more important to the merits of your case than file history vendors. However, file history vendors are rarely scrutinized, and typically are not patent professionals with patent litigation experience or any other legal background.
Since most file history vendors perform a technical rather than a substantive function, they tend to make the following six potentially devastating file history omissions:
- Flaws in documentation supporting declarations under 37 C.F.R. 1.131 and 1.132
- The loss of Examiner annotated references
- The loss of PTO interview summaries
- The loss of key references relevant to the consideration of whether the duty of candor has been complied with under 37 C.F.R. 1.56
- The loss of documents referenced in a PTO document log
- The loss of key documents particularly relevant to the specific substantive issues of your case.
As we discuss below in Section II, while there is something of a safety net to file histories that gives the file good integrity, in these six areas that safety net is either non-existent or insufficient given the importance of these documents to your case. The best way to minimize risk of file loss is to order your file histories from experienced patent litigation professionals that have been specifically trained in these areas.
File histories are much more difficult source materials than most attorneys realize. They are not kept in carefully organized and monitored law firm archives but are officially stored in repositories open to the public. The result is that the PTO’s paper file histories frequently end up in bad shape and need to be reconstructed and that requires a degree of legal judgment that many file history vendors lack.
As for files stored electronically in PAIR, the situation is equally daunting. While PAIR originals are not subject to human mishandling, PAIR unfortunately introduces two new problems. First, it requires one to either download every document in a file history individually, which is very error-prone, or to assemble the file history into a massive PDF. Since we all know how difficult merging simple word processing documents is, we can appreciate the importance of custom made technology to check the merged documents off the cumbersome government database that is PAIR. Second, new documents can show up in PAIR at any time even for applications submitted long ago. PAIR accordingly needs to be constantly monitored for new key documents. Make no mistake – you need custom tailored technology to do this right, supplemented by capable human review.
FastPatentPartner recognized the substantive and technical errors that many file history vendors tend to overlook, and compiled our FastPTODocs team of professional and well experienced patent lawyers and software developers who have developed the technology to make it affordable. Thus, we provide the most thorough and diligent patent file services in the country and we do it at very competitive market prices. All so our clients can have the confidence in their file histories they need to win their cases.
The six potentially devastating
file history omissions
Within a patent file history, there is a safety net provided by its general properties that allows even non-patent professionals to bring a file history into reasonably good shape. File histories are chronologies, and the vast majority of their contents are dated, so anyone capable of ordering documents by date can do a great deal of good to a file history that is out of order. In addition, most of the documents within a file history have contiguous internal page numbering that can be used for page-checking and for finding document breaks, as well as titles that can be used for bookmarking. None of this requires patent litigation expertise, and with good technology this type of processing can be rendered highly cost effective.
What requires patent litigation expertise, however, are the exceptions - the unusual documents. Patent litigators excel at unusual documents, because we use file histories and other key documents against our opponents in ways patent prosecutors and those who support them simply don’t. Patent prosecutors don’t cross examine people using documents; patent litigators do. Patent litigators win cases with documents to tell the stories that we want them to tell; patent prosecutors rarely if ever use documents that way. So patent litigators become masters with key documents: we become masters at finding them, organizing them, and using them effectively.
At FastPTODocs, we take this core expertise and use it to help you win your cases. We are patent litigators and we handle all of our file histories the same way patent litigators handle all of their key documents. We make sure that our staff and technology do the best they can with file histories within their limits. And we make sure that unusual documents make their way up the chain of command without fail.
In particular, we specifically train our litigators and staff to use extraordinary care in the following six areas:
1. Declaration flaw inspection.Declarations under 37 C.F.R. 1.131 and 1.132 and their attachments are typically pivotal documents to prosecution. A missing page in a declaration or its attachments can thus often alter the analysis of the merits of the argument being made by the declaration, and can also be impossible to detect in a copy given the discontinuous numbering of declaration attachments. We accordingly take particular care with declarations during processing and cross-check their contents against the original and copy file histories.
2. Examiner annotation capture.As with all document annotations, Examiner annotations can make for fascinating reading. We accordingly recommend preserving these either by copying all references, or by instructing us to copy all annotated references.
3. Interview summary cross check.Interviews are some of the most pivotal events in the prosecution history of the file. Any indication in the body of the file history that such an event occurred is accordingly cross-checked against the requisite interview summary form and the absence of any such form is noted.
4. Reference cross check.The actual references present in the file are of the utmost importance for purposes of determining compliance with 37 C.F.R. 1.56. We accordingly take care to copy all references when instructed, or to inspect the original file for the presence or absence of specific references as requested.
5. PTO document log to PDF cross check.A complete file history is essential for purposes of determining whether it was abandoned without the contemporaneous knowledge of the PTO or the applicant. See, e.g., Urologix Inc. v. ProstaLund AB, 227 F. Supp. 2d 1033 (E.D. Wis. 2002). We accordingly cross check the document log visible in PAIR or the paper file wrapper TOC against the actual contents of the PDF you receive. For PAIR files, we will also weekly inspect the PAIR record for the next three months to insure our clients are aware of any additional materials which are added to the official PAIR file during this period.
6. Custom inspection.We recognize that our clients are ultimately the experts on what merits issues they are trying to develop with a particular file history order. Accordingly, we ask all of our clients to let us know what potential documentation issues concern them the most from that perspective, and we will make sure the file is handled and inspected to insure those issues are addressed as a top priority as part of our file history reproduction process.
So file histories present many opportunities to win your cases. Look for flaws in opposing counsels file histories. Look for ways in which to maximize on those flaws the way it happened in one of my cases. Used well, file histories can win cases and blindside opposing counsel. We look forward to helping you win your cases.By Geoffrey Mason