Three Patents, One Reference,
One Trusted Vendor

The Client's Situation

A law firm came to us in the middle of a live patent litigation. Their client — the defendant — was being asserted against on a family of three related patents covering a computer-assisted receipt digitization and personal financial management system: technology that captures information from paper receipts, automatically extracts and organizes the transaction data, and feeds the resulting records into budgeting and accounting applications.

The firm needed what defendants in this position always need, and need quickly: strong prior art capable of invalidating the asserted claims, to shift the balance of a case being fought on the plaintiff's terms.

They asked us to conduct an invalidity search across all three patents.

The Complication — and an Honest Word on Cost

The first thing we did was not to search. It was to read — carefully — the claims actually in play across the three patents.

What we found shaped the entire engagement. The three patents were closely related members of a family, and the claims asserted in the litigation covered substantially overlapping technology. The independent claims shared a common inventive core; the differences between them were incremental rather than fundamental.

For most vendors, three patents means three searches and three fees. But we could see that because the patents shared so much technical ground, a single well-designed search effort would cover the essential subject matter of all three — the incremental work for the second and third patents was a fraction of the first, not a repeat of it.

So we told the client that, and offered an upfront discount to reflect it. We were not going to bill three full searches for what the overlap made closer to one and a half.

"It is a small thing. It is also the thing that clients remember — because a vendor who volunteers a discount the client would never have known to ask for is a vendor telling the truth about their own effort. The firm was glad of the saving. They were, we suspect, gladder of what it signalled."

The Turn

With the scope efficiently defined, our team ran the invalidity search with full rigour — the overlap justified a lower fee, not a lighter search.

We construed the shared claim scope across the family, identifying the common inventive elements the prior art would need to disclose, and the points of variation between the three patents.

We searched broadly for anticipating and obviousness-relevant art, across both patent and non-patent literature, and — critically — across multiple languages and jurisdictions, because the single most valuable reference in an invalidity search is very often the one written in another language that the applicant and the examiner never saw.

We prioritised references by priority date and disclosure strength, hunting specifically for art predating the family's priority date that disclosed the claimed receipt-capture-and-financial-integration method.

The search delivered its most valuable result from an unexpected corner: a Korean-language publication, predating the patents' priority date, that disclosed the core claimed subject matter with striking directness. Because the three patents shared their inventive core, a single strong reference reading on that core bore powerfully on all three at once.

We mapped the reference element-by-element against the asserted claims and presented it to the firm with a candid assessment of its strength — and of any gaps a competent opposing counsel would probe. The reference was strong: it read cleanly on the shared inventive elements the whole family depended on.

The Escalation

The firm's reaction told us we had given them what a litigation matter turns on — not a list of maybe-relevant patents, but a reference that mattered.

They immediately engaged us further:

Invalidity contentions. We moved from the search to preparing detailed invalidity contentions built around the Korean reference and the supporting art — the formal, structured articulation of why the asserted claims were invalid, mapped element by element to litigation standard.

Document review on a separate matter. Confident now in our team's technical judgment and our ability to work to the demands of litigation, the firm brought us onto the document review process for a different case — a distinct engagement, and a clear vote of confidence.

The Outcome

The invalidity findings materially strengthened the defendant's position in the litigation.

More durably, the relationship changed character. What began as a single search engagement became a standing one: Rights Reality is now the law firm's preferred vendor for litigation support services.