Crowdsourcing Risk Reality Check

By Marshall Phelps

Since stepping into my new role as CEO at Article One, I’ve spent time speaking with prospective clients about our unique crowdsourcing approach to prior art research. Recently, I’ve started hearing an argument I never expected, because I never shared the belief as a practitioner – prospective clients are hesitant to use crowdsourced research because of perceived risk – or more specifically – inaccurately perceived risk.

With increasing frequency, prospects tell me that they don’t use crowdsourced prior art searches because of the perceived risk it brings in the event that they go to trial. Their concern hinges on potential lack of “home run” art.  The argument goes something like this: if they run a crowdsourced study that fails to uncover one particularly outstanding reference, they fear the opposing counsel could point out to the jury that the defendant “searched the entire world” for prior art and failed to get any quality art back in response. The fear being the opposing counsel could pitch this as a validity
argument for their patent. In the long run, they don’t feel a crowdsourced
search is worth the potential risk.

What does this tell me? We need a reality check.

In reality, crowdsourcing is rapidly becoming an essential step if one is trying to be diligent about patent quality and risk mitigation.  The fact is, NOT using crowdsourcing in the research process introduces risk.

First of all, patent conflicts rarely make it to the courtroom. In most cases, they’re usually settled before they get to that stage. In the unlikely event that it does reach that level, wouldn’t you want to know about all the art that could potentially be uncovered? In a situation like that, I would want all available information in order to be as well-prepared as possible.   NOT doing a crowdsourced search and potentially going to court with less than optimal art is like going into a sports competition but leaving your best player in the locker room so they don’t get hurt.  Think about it – you go to court not knowing if you’ve done the best prior art research you could have done; you lose.  Do you get another bite at the apple? No.  Even if you did, would that be a smart investment or an enormously silly risk?

Second, we’ve already had a number of clients who have taken art uncovered by Article One to trial. When it comes to the prior art discovered by Article One’s global research community, Rule 26(b)(4)(D)  of the Federal Rules of Civil Procedure holds that information provided to a litigant by non-testifying consulting experts (that’s us) is immune from discovery. This is true whether the prior art evidence found by AOP benefits the client’s case or not, or is even used at trial. This tactic was tried once for art provided by AOP during a 2010 case.  As the presiding Judge Cederbaum told counsel seeking discovery in this particular case, “You can’t use this.”

Sounds pretty definitive to me, and logical to boot.

Prior art is a difficult challenge and everyone with any exposure to it knows that no process is exhaustive; it’s simply not possible.  So to claim that the opposition did the best possible job without finding invalidating evidence and therefore a patent is valid is simply silly.  As the judge pointed out, on top of the point made above, no one could possibly know what each researcher was looking for or what they were thinking at the time.  One simply cannot draw a definitive conclusion from the absence of something that no one is certain exists in the first place.

With a recent endorsement from the White House and a long track record of success for many of the most innovative companies in the world, crowdsourcing is undeniably an important step in risk mitigation and improvement of patent quality.

While some may still perceive crowdsourcing research as a risk, I would think the true risk lies in running a sub-par prior art search and missing out on important information that can only be uncovered through crowdsourcing.

[This post originally appeared at Article One’s Patent Quality Matters.]