By Matt Benavides & Jamila Williams ‑ February 12, 2019
Health tracking wearables are the new cellphone. Seemingly at the forefront are Fitbit Inc. and Apple Inc. Today, the Fitbit and the Apple Watch are dominant players in the wearable tech industry, with millions of users relying on their biometric sensor technology to gauge everything from heart rate to distance traveled, steps taken, and calories burned.
Being the market leader, however, doesn’t always make you the first to market. In fact, the type of wearable heart sensor technology used by Apple and Fitbit was first introduced in 2006 by a small company named Valencell Inc., which eventually patented it. Valencell then licensed it to other technology manufacturers—including LG, Bose and Sony—for use in wearables such as earbuds and watches.
What happened next prompted a massive (and still ongoing) legal battle. Between 2013 and 2015, two new wearable fitness products were launched and quickly gained market dominance: The FitBit and the Apple Watch. By 2016, Valencell had sued both companies for patent infringement. In response, Apple and Fitbit launched post grant proceedings to challenge the validity of Valencell’s heart rate sensor patent.
So far, Apple and Fitbit’s bid seems successful. In May 2018, the U.S. Patent Trial and Appeals Board invalidated one of the major patents at the heart of Valencell’s infringement suit, citing prior art presented by the two tech giants. It’s a result that would not have happened without a high-quality, painstakingly thorough invalidity search.
For most organisations, it’s difficult—if not impossible—to perform such a significant, detailed search in-house. They need a specialised search partner, one with very specific capabilities and expertise in finding the patent and technical literature needed to clear the competitive playing field. What should they look for? Here are the four most critical capabilities to look for when choosing a search partner.
Every search is different, and every company has different needs, resources and goals. One company might want a miles-deep search that leaves no stone unturned. Others, perhaps with a smaller budget, might only want a very simple, comparatively smaller search. What matters is that you find a search partner who can scale and customise their search according to your budget, needs and desired outcomes.
2. Search Depth
In an age when there seems to be an app or invention for almost everything, it’s hard to devise a truly original idea. The U.S. alone has an estimated 2.1 million patents currently in force, let alone the millions more you’ll find around the globe. For a company hoping to enter a particular industry space through a post-grant proceeding and invalidity search, that’s a huge amount of ground to cover. You want to know that whoever you eventually choose to conduct your search will have the deepest possible access to the widest possible volume of data and records, from existing patents to prior art searching and more.
In the realm of post grant proceedings, time is often critical. Companies often have a limited window of time to invalidate a patent before it’s too late. One of the biggest mistakes companies make is trying to undertake the search themselves, despite a lack of resources or time. Too often, the consequence is too much time spent on something a search partner could have conducted in a considerably shorter amount of time. By choosing an experienced patent researcher, you’ll get the most thorough possible search, while your inhouse legal or IP team focuses doing their jobs.
With new inventions and innovations constantly emerging, finding and establishing prior art will only grow more challenging. To level the playing field and get the best possible outcomes, it’s critical that corporates turn to search partners with a comprehensive stable of capabilities and expertise.
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