Success Story

How Lumenci went past the client's reference list and charted invalidity and delivered five counterclaim patents.

 

You file the suit, and the defendant answers with its own patents. Lumenci tested the client's prior art list, searched past it, and charted invalidity against all five counterclaim patents before the contentions deadline.

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Case at a Glance

Domain 

Wearable devices, GPS and positioning

 Service

Prior art search; Invalidity contention support  

Client

US law firm,
representing the plaintiff 

Result

Every asserted claim of five counterclaim patents charted for invalidity, ahead of the contentions deadline.

Charting the references you are handed is easy. The job is knowing if they are the best ones.

What most teams do.

Chart the references the client hands over, whether or not they cover every claim.
 

What Lumenci did instead.

Tested every reference on the list against each claim element, then searched past the list and found stronger prior art.

Why it mattered.

Counsel built their contentions on better prior art than they started with, and used the charts without a rework round.

How It Was Done

Lumenci worked as an extension of the client's litigation team, staffed with engineers experienced in GPS, RF and wearable hardware & in the standards invalidity contentions have to meet.

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Tested the client's reference list

Checked each reference for whether it alone disclosed every element of an asserted claim.

Searched past the list

Ran an independent search across all five patents for single references and combinations (§102 and §103).

Charted every asserted claim.

Mapped each claim element to its disclosure in the prior art

Backed every combination.

Added a motivation-to-combine analysis wherever a chart relied on more than one reference.

Wrote it the way counsel files it.

Used consistent legal terminology so counsel could lift sections straight into briefs.

Turned around late requests.

Delivered additional litigation documents at short notice in the final stage

 What Changed for the Client

Where they stood.

Five patents asserted as counterclaims, a fixed contentions deadline, and a reference list of unknown strength

 

What Lumenci Enabled.

The patent owner faced invalidity contentions charted against every asserted claim, built on stronger prior art than the client started with.

How it ended.

The litigation is ongoing. The client used the charts as delivered and has brought Lumenci more patent analysis work since


 Prior Art Search for Patent Litigationn

We provide expert-led prior art search for invalidity contentions, IPR petitions, and validity challenges. Our practice is part of an integrated IP services platform spanning claim charting, expert testimony, reverse engineering, and product testing.
 
 

  

 100k+ Patents Analyzed 

 1200+ Products Tested 

 

250+ Litigations Supported 

 What This Would Look Like for Your Matter

If you have an invalidity contention deadline coming up, send us the asserted patents and any prior art you already have. We will tell you where the current references are weak and what a fresh search should target. We will also tell you what we can deliver before your deadline. 

Frequently Asked Questions

Can you work from prior art research we have already done?

Yes. In this matter Lumenci reviewed the client's research, then ran its own prior art search and found stronger references.

Can you work to a local patent rules deadline?

Yes. This matter ran on a tight deadline, and the team also turned around additional litigation documents in the final stage.

Why include a motivation-to-combine analysis?

When an invalidity argument combines two or more references, you have to show why a skilled person would have combined them. Since KSR v. Teleflex (2007), that reasoning has to be explicit. Including it up front closes a gap the patent owner would otherwise attack.

Can one team cover a portfolio that mixes hardware, RF and software?

Yes. These five patents covered GPS positioning, antennas and RF, sensors, and how hardware and software work together. The same Lumenci team handled the search and the claim charts.

Can Lumenci help a plaintiff hit with patent counterclaims?

Yes. In this matter, Lumenci built invalidity charts against five counterclaim patents for the party that brought the suit. Most of Lumenci's litigation work is for patent owners.
 
 

 Answer patent counterclaims with stronger prior art, not just the references you started with.