Stu Soffer of IPRIORI has conducted an interesting study on 109 recent patent cases. He looked at the types of prior art cited by courts in making decisions on invalidity. The following is excerpted from Mr. Soffer’s recent report:
“Some time ago I started tracking in my ePriori database the type of art (and the reference itself) of prior art applied against specific patent claims found in dispositive orders -- Summary Judgment Orders and Appeals – materials that presumably rise above the heap presenting the best arguments. I don’t track the art in file histories unless it is specifically part of the final litigation. What follows is a very small sampling and may not hold with larger samplings, but seems plausible. This mini-study covers 342 items of art applied to 147 patents in 109 patent cases.
This small sample tells an interesting story, including the breadth of materials to consider. Most frequently used are other patents. I would have expected ‘articles’ to be the next, but instead citations to ‘products’ is the second most applied. This is possibly a reflection of the knowledge of the parties of the history of their markets. Another indication is that the materials most often searched online – the easily accessible -- only account for 64% of materials. The ‘other’ category includes: theses, source code, software, websites, textbooks, compounds, print, grant proposals, advertisements, press releases, technical standards, and patent applications. The ‘ephemera’ category captures real oddities. For example, a dental mould of teeth.”
This evidence comes from litigation — however, it could have some impact on prosecution issues. Notably — to what extent are known products submitted as prior art to the PTO? Are brochure disclosures sufficient?