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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`DECLARATION OF JAMILA
`WILLIAMS.
`
`
`
`
`
`
`
`
`
`Inter-partes Review Trials:
`
`IPR2017-00136
`IPR2017-00137
`
`
`
`
`
`
`
`
`
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`
`
`
`
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`DECLARATION OF JAMILA WILLIAMS
`
`
`
`
`PETITIONER VALVE CORPORATION, EX. 1019, p. 001
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
`
`

`

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`
`I, Jamila Williams, hereby declare as follows:
`
`I have personal knowledge of the facts stated in this Declaration, and
`1.
`am competent to testify thereto.
`I am a skilled prior art searching professional, with sixteen years of
`2.
`professional experience in patent searching, presently employed by CPA Global
`(Landon IP) Inc. as Director of Mechanical Engineering – IP Search. Before my
`employment with CPA Global (Landon IP) Inc., I was employed as a prior art
`searching professional for CPA Global (Landon IP) Inc.’s predecessor, Landon IP,
`Inc., starting in 2011. Previously, I was a Patent Examiner at the United States
`Patent and Trademark Office, from 2001 to 2009. During that entire fourteen-year
`time period, I have been conducting and supervising professional prior art searches.
`3. Landon IP, Inc. was purchased by CPA Global in August 2014 and was
`rebranded as CPA Global (Landon IP) Inc. in April 2016. Before, throughout, and
`after the acquisition of Landon IP by CPA Global, I was continuously employed by
`the acquired or acquiring entity as a prior art searching professional.
`The law firm of Barceló, Harrison & Walker, LLP (hereinafter “the
`4.
`Client”) hired Landon IP on various occasions to conduct patent validity searches,
`including a particular group of prior art searches in March 2014 on an allegedly
`inventive controller for a video game console, as described and claimed in US
`Patent 8,641,525 (and in US Patent 9,089,770, which has a common specification
`and the same priority date). The Client paid Landon IP $6,880 for that particular
`group of prior art searches (hereinafter “the Subject Searches”), of which $4,300
`was incurred because the Client authorized the searching that Landon IP
`recommended, and an additional $2,580 was incurred because the Client also
`authorized supplemental Japanese prior art searching.
`Landon IP dedicated a four-person team to the Subject Searches,
`5.
`directed by Mr. Adam West, with me acting as the Technical Lead, and including a
`
`
`
`
`
`- 1 -
`
`DECLARATION OF JAMILA WILLIAMS
`
`
`
`
`
`PETITIONER VALVE CORPORATION, EX. 1019, p. 002
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
`
`

`

`
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`US prior art analyst and a Japanese prior art analyst. All four members of that team
`were well-trained search professionals at the time of the Subject Searches, each with
`several years of experience in applying the best practices in prior art searching, and
`each spending approximately five days of labor on the Subject Searches.
`At the time of the Subject Searches, Landon IP had been offering
`6.
`professional patent search services for more than 16 years, and was an industry
`leader in patent searching methods, founded in 1998.
`In 2007, three executives of Landon IP, Inc., wrote a book on the tools
`7.
`and techniques of patent searching, which book then became well regarded as an
`authority on professional patent searching methods. The co-authors of the book
`were David Hunt, the CEO and owner of Landon IP, Long Nguyen, the director of
`patent search quality for Landon IP, and Matthew Rogers, the vice president of the
`patent search group of Landon IP. The book was published as: “Patent Searching:
`Tools and Techniques,” David Hunt, ISBN: 978-0-471-78379-4, John Wiley &
`Sons, 2007. Naturally, Landon IP’s prior art searches, including the Subject
`Searches, were conducted in general accordance with methods outlined in that book,
`which had been written by Landon IP’s own leadership. I am familiar with that
`book, which is considered to be a learned and trusted treatise in the field of prior art
`searching, and a true and correct copy of an excerpt of it appears at Appendix 1 of
`this declaration.
`The first step of the Subject Searches was to collaborate with the Client
`8.
`to identify target claims and specific limitations of interest, the critical dates, and
`any prior art references already known to the Client. Initial citation searching was
`then performed, to review the prior art of record and prior art already known to the
`Client, to help identify most pertinent search classes & sub-classes, and keywords.
`The initial searching of the Subject Searches also included ten internet searches on
`products that were potentially pertinent to the subject controller for a video game
`console.
`
`
`
`
`
`- 2 -
`
`DECLARATION OF JAMILA WILLIAMS
`
`
`
`
`
`PETITIONER VALVE CORPORATION, EX. 1019, p. 003
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
`
`

`

`
`
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`
`Once the most pertinent search classes & sub-classes, and keywords
`9.
`were initially identified, numerous searches of the Subject Searches were performed
`using that information. For example, the Subject Searches included approximately
`eleven searches by the most pertinent classification & sub-classifications that had
`been identified, and approximately 45 searches by the most pertinent keywords and
`combinations of keywords that had been identified. Several manual searches, and
`several searches by assignee, were also performed as part of the Subject Searches.
`Once prior art references of particular interest were identified, forward and
`backwards citation searches on those prior art references were also conducted as part
`of the Subject Searches. A true and correct copy of the search strings that were used
`for searching U.S. patent documents and on the Internet during the Subject Searches
`appears at Appendix 2 of this declaration. A true and correct copy of the search
`strings that were used for searching Japanese documents during the Subject
`Searches (and an English translation of the same) appear at Appendix 3 of this
`declaration. The search string records that appear at Appendices 2 and 3 of this
`declaration were made and generated by my team (including myself) as part of
`Landon IP’s regular prior art searching processes and practices, and were included
`with the prior art search results that were transmitted to my team (including myself)
`and to Mr. Reynaldo C. Barceló, an attorney for the Client, on March 27, 2014.
`These search strings are records that are kept and were transmitted in the course of
`Landon IP’s regularly conducted activity.
`10. CPA Global (Landon IP) Inc. is being paid $200 per hour for my work
`associated with preparing this declaration and the related required analysis. My
`compensation for work on this declaration is not contingent on any outcome in this
`case. Pursuant to 28 U.S.C. § 1746, I declare under penalty of perjury that the
`foregoing is true and correct.
`
`
`
`
`
`
`
`- 3 -
`
`DECLARATION OF JAMILA WILLIAMS
`
`
`
`
`
`PETITIONER VALVE CORPORATION, EX. 1019, p. 004
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
`
`

`

`PETITIONER VALVE CORPORATION, EX. 1019, p. 005
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
`
`

`

`APPENDIX 1
`
`PETITIONER VALVE CORPORATION, EX. 1019, p. 006
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
`
`

`

`Patent
`Searching
`Tools &
`Techniques
`
`HUNT
`DAVID
`LONG NGUYEN
`MATTHEW
`RODGERS
`
`81C:ENT0:NNl<U-.,
`
`1 8 0 7 ~
`@WILEY~
`2007?
`•
`".-«-> .-.. -. N -'I A>. r
`
`John Wiley & Sons, Inc.
`
`PETITIONER VALVE CORPORATION, EX. 1019, p. 007
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
`
`

`

`This book is printed on acid-free paper. §
`
`Copyright © 2007 by John Wiley & Sons, Inc. All rights reserved.
`
`Published by John Wiley & Sons, Inc., Hoboken, New Jersey.
`
`Published simultaneously in Canada.
`
`No part of this publication may be reproduced, stored in a retrieval system, or transmitted in
`any fonn or by any means, electronic, mechanical, photocopying,
`recording, scanning, or
`othe1wise, except as pennitted under Section 107 or 108 of the 1976 United States Copyright
`Act, without either the prior written permission of the Publisher, or authorization
`through
`payment of the appropriate per-copy fee to the Copyright Clearance Center, Inc., 222 Rose(cid:173)
`wood Drive, Danvers, MA 01923, 978-750-8400,
`fax 978-646-8600, or on the web at
`wWvV.copyright.corn. Requests to the Publisher for permission should be addressed to the
`Pemtissions Department, John Wiley & Sons, Inc., 111 River Street, Hoboken, NJ 07030,
`201-748-6011,
`fa..x 201-748-6008, or online athttp://www.wiley.com/go/pemllssions.
`
`Limit of Liability/Disclaimer of Warranty: While the publisher and author have used their
`best efforts in preparing this book, they make no representations or warranties with respect to
`the accuracy or completeness of the contents of this book and specifically disclaim any im(cid:173)
`plied warranties of merchantability or fitness for a particular purpose. No warranty may be
`created or extended by sales representatives or written sales materials. The advice and strate(cid:173)
`gies contained herein may not be suitable for your situation. You should consult with a pro(cid:173)
`fessional where appropriate. Neither
`the publisher nor author shall be liable for any loss of
`profit or any other commercial damages, including but not limited to special, incidental,
`consequential, or other damages.
`
`For general information on our other products and services, or technical support, please
`contact our Customer Care Department within the United States at 800-762-2974, outside
`the United States at 317-572-3993 or fax 317-572-4002.
`
`Wiley also publishes its books in a variety of electronic formats. Some content that appears in
`print may not be available in electronic books.
`
`For more infonnation about Wiley products, visit our Web site at http://www.wiley.com.
`
`Library of Congress Cataloging-in-Publication Data:
`
`tools & techniques / David Hunt.
`
`Hunt, David.
`Patent searching:
`p. cm.
`Includes index.
`(doth: alk. paper)
`ISBN: 978-0-471-78379-4
`1. Patent searching. 2. Patent literature, I. Title. II. Title: Patent searching tools
`and techniques.
`T210.H86 2007
`025.06'608
`
`2006030758
`
`10 9 8 7 6 5 4 3 2
`
`PETITIONER VALVE CORPORATION, EX. 1019, p. 008
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
`
`

`

`Contents
`
`About the Editors
`
`About Landon IP, Inc.
`
`Acknowledgments
`
`Preface
`
`CHAPTER
`
`1
`
`Patent Law and Examination as Context for
`Patent Searching
`The U.S. Patent System
`The Benefits of Potent Protection
`Harmonization of Patent laws
`The Paris Convention
`The Patent Cooperation Treaty
`Trade-Related
`Intellectual Propetty Rights (TRIPS)
`American Inventors Protection Act of 1999 (AIPA)
`The Priority Dote
`The U.S. Provisional Application
`Continuing Applications
`Nonprovisional Applications
`Sections of a Patent
`A Note about Reading the Specification and the Claims
`Sections of a Patent File History
`look before You leap: Considerations before Filing
`Patent Examination Process
`The Job of the Patent Examiner
`The Examiner Follows the Courts
`The Examiner Follows Patent Examining Procedure
`Administrative Handling of the Patent Application
`Actual Patent Examination
`The Examiner Reviews Cited Patents and Nonpatent
`Publications
`
`ix
`
`xi
`
`xiii
`
`xvii
`
`1
`2
`3
`4
`4
`5
`5
`S
`6
`6
`6
`6
`7
`8
`8
`10
`11
`12
`12
`12
`12
`13
`
`15
`
`iii
`
`----
`
`PETITIONER VALVE CORPORATION, EX. 1019, p. 009
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
`
`

`

`jy
`
`CONTENT$
`
`CHAPTER
`
`2
`
`CHAPTER
`
`3
`
`The Examiner Conducts an Inventor Search ("Double
`Patenting" Search)
`The Examiner Applies the References
`After Patent Grant
`Backlog of Patent Applications
`
`Types of Patent Searches
`Patentability
`What Is a Patentabi/ity Search?
`When Is a Patentability Search Needed?
`What Needs to Be Searched in a Patentability Search?
`What the Searcher Needs to Know to Search Successfully
`Validity
`What Is a Validity Search?
`When Is a Validity Search Needed?
`What Needs to Be Searched in a Validity Search?
`Infringement
`What Is an Infringement Search?
`"When Is an Infringement Search Needed?
`\Vhat Needs to Be Searched in an Infringement Search?
`Clearance
`What Is a Clearance Search?
`When Is a Clearance Search Needed?
`What Needs to Be Searched in a Clearance Search?
`State of the Art
`What Is a State-of-the-Art Search?
`When Is a State-of-the-Art Search Needed?
`What Needs to Be Searched in a State-of-The-Art Search?
`Patent Landscape
`What is a Patent Landscape Search?
`Benefits of Prior Art Searching
`
`The Mechanics of Searching
`Introduction
`Properly Scoping the Search
`Identifying Subject Features: Problem-Solution Approach
`Generating Keywords
`Selecting Classification Areas
`_l.J.S. Patent Classification (USPC) System
`USPC Index
`( www. usp to. gov I web/ patents/ classification/ uspcindex/
`indextouspc.htm)
`USPC Keyword Search
`(www.uspto.gov I we bl patents/classification/)
`
`16
`17
`17
`18
`
`21
`21
`21
`22
`23
`23
`24
`24
`24
`25
`26
`26
`27
`27
`28
`28
`28
`29
`30
`30
`30
`30
`31
`31
`31
`
`35
`35
`37
`37
`39
`41
`41
`
`42
`
`42
`
`PETITIONER VALVE CORPORATION, EX. 1019, p. 010
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
`
`

`

`CONTENTS
`
`V
`
`Reviewing Closely Related Patents
`Finding Subclasses with the Help of a Patent Examiner
`IPC (International Patent Classification)
`ECLA (European Patent Office Classification)
`FI/F-Term
`Preparing Initial Text Queries
`Conducting the Search
`Evaluating Patent Documents
`The Sections of a Patent and Their Usefulness in Patent
`Searching
`Titles
`Abstracts
`Descriptions of the Invention
`Claims
`Drawings
`Determining Relevancy According to the Invention
`Subject Features
`Evaluating Patent Documents in Different Search Types
`Patentability and Validity as Applied to 35 United
`States Code (USC) § 102 and 103
`Identifying the Subject Features for a Patentability Search
`Identifying the Subject Features for a Validity Search
`Identifying the Subject Features for an Infringement
`Search
`Identifying the Subject Features for a Clearance or
`Freedom to Operate Search
`Classificotion Searching
`Core Classification Searching
`Peripheral Classification Searching
`Discrepancies in the U.S. Patent Classification System
`Full-Text Searching
`Citation Searching
`Backward Citation Searching
`Forward Citation Searching
`Searching Foreign Patent Documents
`Paris Convention for the Protection of International
`Property
`The European Patent Organization
`World Intellectual Property Organization (WIPO)
`Patent Cooperation Treaty (PCT)
`National Authorities
`Searching Full-Text Major Foreign Patent Documents
`Keyw-ords in Foreign Languages and Simple Translations
`Using Machine Translators to Assess Foreign Art
`Searching Abstract-Only Databases
`
`43
`45
`46
`47
`47
`47
`51
`52
`
`52
`52
`52
`53
`53
`53
`
`53
`60
`
`60
`60
`60
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`62
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`62
`63
`64
`66
`67
`68
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`
`75
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`77
`78
`79
`79
`So
`81
`
`PETITIONER VALVE CORPORATION, EX. 1019, p. 011
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
`
`

`

`vi
`
`CONTENTS
`
`CHAPTER
`
`4
`
`CHAPTER
`
`5
`
`Value-Added Toals
`Derwent World Patent Index (DWPI)
`Searching Nonpatent literature (NPL)
`Issues Peculiar to Certain Technical Disciplines
`Biotechnology
`BIOSIS
`BIOTECHABS/BIOTECHDS
`CHEMICAL ABSTRACTS
`CAB ABSTRACTS
`Chemical
`Business Methods
`Computer, Software, and Electronics
`Mechanical Engineering
`Estimating Search Time
`
`Patent Analysis
`The Precursor to Patent Analysis
`Searches versus Analyses: What's the Difference?
`Features of Patent Analyses and Reporting
`Establish Clear Objectives
`The Importance of the Data
`The Trouble with Shortcuts
`Capturing the Data Set
`Processing the Results
`Displaying Results
`Sample Patent Analysis Report
`
`Approaches to Reporting Search Results
`Purpose of the Search Report
`Anatomy of a Search Report
`Writing a Summary
`Presenting the Subject Matter
`Discussing References
`Writing Discussions
`Example: Hamster Health Spa
`Indicating Claims
`Prioritizing References
`Central References
`Peripheral References
`Central and Peripheral References
`Search History
`Classification Areas
`Databases Accessed
`
`.
`
`82
`82
`82
`84
`84
`87
`87
`88
`88
`88
`90
`92
`105
`106
`
`109
`109
`110
`112
`112
`112
`113
`114
`115
`116
`117
`
`127
`128
`129
`129
`130
`132
`134
`135
`136
`137
`138
`139
`140
`141
`142
`143
`
`PETITIONER VALVE CORPORATION, EX. 1019, p. 012
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
`
`

`

`CHAPTER 6
`
`CONTENTS
`
`Vii
`
`Examiners Contacted
`Conclusion
`
`Search Tools
`The Availability of Patent Information
`Criteria for Selecting Search Tools
`Data Coverage
`Document Delivery
`Import and Export Functions
`Pricing
`Usability
`Company Strength
`When to Select a Search Tool
`Breadth and Depth of Data Coverage
`Data Sources for Chemical Searches
`Data Sources for Mechanical Searches
`Data Sources For Electrical/Computer Searches
`Patent Data Sources for Electrical
`and Computer Searches
`NPL Sources for Electrical Searches
`Data Sources for Business Methods Searches
`Methods of Access
`Text Search Syntax
`Discussion of Specific Search Tools
`USPTO Search Room
`U.S. Patent and Trademark Depository Libraries (PTDL)
`Micropatent Patent Web
`Examiner Assisted Search Tool (EAST)
`Thomson Delphion
`Questel-Orbit
`PatAnalyst
`Minesoft PatBase
`Access to Nonpatent Literature
`The Internet
`The Internet Needs a Skilled Searcher
`Meta-Search Engines
`DialogWeb
`IP.com
`IEEE Xplore
`NCBI
`Searching J oumals
`Conference Proceedings
`Newspapers, Magazines, and Catalogues
`
`143
`143
`
`145
`145
`146
`147
`147
`148
`148
`149
`149
`150
`151
`151
`154
`156
`
`156
`156
`157
`159
`159
`160
`160
`161
`161
`164
`166
`167
`167
`169
`170
`17 3
`17 5
`17 5
`175
`176
`176
`177
`17 7
`178
`179
`
`PETITIONER VALVE CORPORATION, EX. 1019, p. 013
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
`
`

`

`Viii
`
`CONTENTS
`
`Index
`
`Value-Added Capabilities of Search Tools
`Alerting
`Search History
`Information and Image Importing and Exporting
`Legal Status, Maintenance Fees, and Prosecution
`Costs
`Visualization
`Conclusion
`
`179
`179
`179
`180
`181
`181
`181
`182
`
`PETITIONER VALVE CORPORATION, EX. 1019, p. 014
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
`
`

`

`About the Editors
`
`Hunt is the CEO and owner of Landon IP, Inc. He holds a BA
`David
`and an MBA from the College of William & Mary and has worked as a
`senior manager in corporate strategy, market research, and competitive in(cid:173)
`telligence at the Federal Home Loan Mortgage Corporation (Freddie Mac)
`in McLean, Virginia. Mr. Hunt has served as a project manager at large and
`small companies in the information technology areas. He has considerable
`experience in operations management. Mr. Hunt is a member of PIUG
`and PA TMG, which are the professional patent information users groups
`in the United States and England. He is a member of the International
`Trademark Association (INT A) as well as the Society for Competitive In(cid:173)
`telligence Professionals (SCIP).
`
`Long B. Nguyen is the director of patent search quality for Landon IP,
`Inc. He holds an MS in engineering management from George Washing(cid:173)
`ton University, and a BS in mechanical engineering and a BA in econom(cid:173)
`ics from Syracuse University. Mr. Nguyen is a registered patent agent (No.
`56,138) with several years of experience
`in patent prosecution at the
`United States Patent and Trademark Office (USPTO). While at the
`USPTO as a patent examiner, he exa1nined technologies
`that included
`traction devices, wheels and axles, and tire inflation systems. Mr. Nguyen
`also has experience in business methods.
`
`Matthew Rodgers is the vice president of the Patent Search Group for
`Landon IP, Inc. He holds a BS in mechanical engineering from the Uni(cid:173)
`versity of Texas at Austin. Mr. Rodgers has conducted research in semi(cid:173)
`conductor heat treatment and selective laser sintering. Additionally, he
`
`ix
`
`PETITIONER VALVE CORPORATION, EX. 1019, p. 015
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
`
`

`

`X
`
`ABOUT THE EDITORS
`
`possesses significant experience in the analysis of metallurgical failure. Prior
`to joining Landon IP, Mr. Rodgers worked for several years as a patent ex(cid:173)
`aminer at the USPTO and as a technical specialist who conducted patent
`searches at other commercial patent search firms. He is a regular faculty
`member of the leading patent law training company, Patent Resources
`Group, Inc., of Charlottesville, Virginia.
`
`PETITIONER VALVE CORPORATION, EX. 1019, p. 016
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
`
`

`

`About Landon IP, Inc.
`
`IP has a long and rich history in the retrieval and analysis of
`Landon
`patent and trademark information dating back to 1949. The current com(cid:173)
`of four separate firms: Cantwell & Paxton
`pany is the consolidation
`(founded in 1949), Betty Byrd Inc. (founded in 1960), Landon & Stark As(cid:173)
`sociates (founded in 1986), and Myra Hunter & Company.
`Landon IP conducts professional patent searches for the legal and busi(cid:173)
`ness communities. The company also analyzes patents and scientific articles,
`conducts technical intelligence, and consults to corporations and law firms
`worldwide. Landon [P's information group sells patents, file histories, and
`other documents on paper and in electronic formats.
`The company's primary services include:
`
`• Patent searches that are commissioned by patent attorneys as they
`counsel clients on patentability,
`infringement,
`freedom
`to operate,
`state of the art, and validity.
`
`• Complex patent analysis to support research and development, patent
`valuations, and better licensing decisions.
`
`trademark searches
`federal, state, and common-law
`• Comprehensive
`in the United State, and abroad.
`that identify trademark opportunities
`• Patent file histories that are available on paper and electronically by e(cid:173)
`mail, CD-ROM,
`and on the Web.
`
`translations that are conducted by language and technical
`• Technical
`specialists with expertise in all major languages and all technical areas.
`
`• Patent application drafting on behalf of companies and law firms in
`the electrical, mechanical, and biotechnology
`fields. The company's
`
`xi
`
`PETITIONER VALVE CORPORATION, EX. 1019, p. 017
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
`
`

`

`Xii
`
`ABOUT LANDON
`
`IP, INC.
`
`patent agents do not prosecute applications, but support research sci(cid:173)
`entists and attorneys with professionally drafted invention disclosures,
`applications, and amendments on a project basis.
`
`Landon IP is one of only two companies awarded the Patent Coopera(cid:173)
`tion Treaty (PCT) patent search pilot contract by the U.S. Patent & Trade(cid:173)
`mark Office (USPTO) in 2005. Landon IP successfully conducted PCT
`searches for the USPTO in the mechanical, electrical communications, and
`medical device fields. In 2006, the USPTO awarded Landon IP with a
`five-year contract to search (PCT) applications in the mechanical, electrical
`communications, medical device (a.k.a. life sciences), and physical sciences
`fields.
`
`PETITIONER VALVE CORPORATION, EX. 1019, p. 018
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
`
`

`

`CHAPTER 3
`
`The Mechanics of Searching
`
`Tms
`
`chapter teaches an effective approach for scoping a search. It de(cid:173)
`scribes the different types of patent searches; proposes criteria and methods
`for determining
`the relevancy of patent references; discusses the impor(cid:173)
`tance of certain sections of the patent for determining relevancy; and pres(cid:173)
`ents the benefits of classification, full text, and citation searching. The
`chapter also presents issues that are peculiar to different types of subject
`matter and how to address them.
`
`INTRODUCTION
`
`Before digitized patent information was available, a patent search consisted
`of a manual review of paper patent documents directed only by available
`classification and indexing systems. In the United States, a patent search in(cid:173)
`volved literally flipping through patents stored in "the shoes" or filing cab(cid:173)
`inets of the U.S. Patent and Trademark Office (USPTO). The way to
`navigate patents was by relying exclusively on the patent classification sys(cid:173)
`tem to guide you. Patents that were misclassified were usually missed. The
`original patent search, in its purest form, was a patent classification search.
`Since the arrival of digitized patent infonnation,
`the text search has be(cid:173)
`come an integral part of-and
`for some practitioners,
`the only approach
`searcbing. Because it is possible to text search across all available
`to-patent
`patent classification areas simultaneously,
`son~e searchers rely on text
`searching exclusively with the notion that such a search is more targeted
`and "outlier" misclassified patents will be captured that otherwise would
`
`35
`
`PETITIONER VALVE CORPORATION, EX. 1019, p. 019
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
`
`

`

`36
`
`CHAPTER
`
`3
`
`THE MECHANIC$
`
`OF' SEARCHING
`
`not be included in a strict classification search. Broadly speaking, a text
`search is any query where free text is entered to retrieve results.
`Text searching can encompass a search across any patent data field and
`not just matching text phrases in the body of a patent. Text searching can
`include an inventor search, a search for a specific filing date, an assignee
`(owner) search, or many others.
`In addition to text queries, searchable patent information has made cita(cid:173)
`tion searching very easy. As this chapter will discuss, citation searching is a
`review of the documents cited by a patent of interest, as well as a review of
`the documents citing the patent of interest.
`As patenting activity has continued to increase at a staggering rate, so has
`available patent information. The sheer volume of patent information cur(cid:173)
`rently available is a reflection not only of fundamental technological ad(cid:173)
`vancements, but an increasingly wider variety of improvements
`that are
`made to each new fundamental discovery. In short, the number of varia(cid:173)
`tions of each invention is increasing.
`Consequently, it is more difficult than ever to be a true subject matter ex(cid:173)
`pert simply due to the pace and breadth of i1movation. The volume of patent
`infomiation renders a straightforward and linear patent search ineffective.
`Before beginning a search you should consider the following concepts at
`all times:
`
`• A patent search is a learning process in and of itself.
`
`• A patent search is continually iterative.
`
`The searcher or information scientist will learn, for example, alternate
`embodiments of the invention in hand through the course of the search,
`and the searcher must use this knowledge to continually refine his or her
`search methodology.
`It is crucial in any search for prior art that all three basic search mecha(cid:173)
`nisms be used appropriately-that
`is, classification searching, text searching,
`and citation searching.
`One exception
`to this guideline is applied when searching very new
`technology where classification schedules may lag behind the technology.
`When this happens, the corresponding classification schedules do not have
`as many subcategories (or subclasses) as they should. We discuss this point
`further in the secdon on biotechnology
`searches.
`
`PETITIONER VALVE CORPORATION, EX. 1019, p. 020
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
`
`

`

`PROPERLY SCOPING
`
`THE: SEARCH
`
`37
`
`The search steps discussed in this chapter illustrate a systematic way of
`searching patent documents. A large proportion of the chapter, however,
`is dedicated to preparing for the search. This includes properly scoping the
`subject matter, properly scoping the classification areas to be searched, and
`properly generating initial text queries. All of these steps are important to
`achieving a systematic and methodical search.
`Please note that when discussing steps that require evaluating the results
`of a search query, either during search scoping or in conducting the search,
`this text assumes that the searcher is familiar with and is using an electronic
`search engine.
`By definition an invention is a discovery or finding. 1 However, many
`practitioners
`in the patent community consider an invention only a dis(cid:173)
`covery or finding that has been deemed useful, novel, and nonobvious. For
`clarity, the term invention is used in this chapter to describe an idea that is
`provided
`to the searcher for the purposes of a patent search. This may
`come in the form of a simple, informal disclosure, a fully drafted patent ap(cid:173)
`plication, or an issued patent, depending on the type of search requested
`(see Chapter 2).
`
`PROPERLY
`
`SCOPING
`
`THE SEARCH
`
`Identifying Subject Features:
`Problem-Solution Approach
`
`N ecessiry is the mother of invention. Inherently, all inventions fill a need
`by solving a problem. The solution to the problem includes what the in(cid:173)
`vention is and what the invention does. This is an important distinction to
`make prior to embarking on the search.
`As you scope the search, your first step should be to compartmentalize
`the invention
`into discrete, searchable features by answering
`these questions:
`
`• What problem does the invention solve?
`
`• What is the invention?
`
`• What does the invention do?
`
`If this seems overly simplistic, you will see the importance of answering
`these questions thoroughly and literally in the exercises that follow.
`
`PETITIONER VALVE CORPORATION, EX. 1019, p. 021
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
`
`

`

`38
`
`CHAPTER
`
`3
`
`THE MECHANICS
`
`OF" SEARCHING
`
`We will illustrate this approach using a sample invention. This example
`will help communicate several concepts in the chapter. Let us begin with
`a high-speed car chase:
`
`High speed police chases are a danger to people and property. The amount of time a
`high-speed chase continues will increase the chances qf dvilian or material harm. To
`prevent these chases from or£urring, the need has arisen for a remote car disabling
`mechanism used by police officers to impede the progress of the getaway car. The mecli(cid:173)
`anism would inc01porate a tamper-proof receiver installed by default in every automo(cid:173)
`bile upon manufacture that responds to the signal from a transmitter to cut the fuel
`supply and i:,tnition to the engine. The receiver is connected to a relay that may cut off
`power to a vehicle's electric fuel pump or acti1Jate a cuteff 1Jalve. The relay also cuts
`power to the ignition pack or distributor. Transmitters and control modules are in(cid:173)
`stalled in all police vehicles. The officer may use the control module to select the vehi(cid:173)
`cle that requires disablement by identification (e.g., license plate number) and transmit
`a Juel-cuteff signal to the appropriate vehicle. The officer may be in a police vehicle
`such as a patrol car or helicopter.
`
`See the following table for the answers to the key questions for the pre(cid:173)
`ceding example.
`
`What problem does the
`invention solve?
`What is the invention?
`
`What does the invention do?
`
`High-speed police chases are a danger to
`people and property.
`A control module, a transmitter, a receiver,
`optionally a valve, and at least one switch.
`Remotely disables a car in motion by
`cutting off the fuel supply and ignition.
`
`these questions, you will see important keywords
`When answering
`emerge as shown in bold in the preceding table.
`It would be easy to answer the question "What is the invention?" with
`a response like "A device that remotely disables a car by cutting off the fuel
`supply and ignition." However, this does not describe what the invention
`physically