Rebuttal of Invalidity Contention
A rebuttal of invalidity contention is the technical answer to an invalidity analysis brought against a patent. We read each cited prior art reference against the claims to test whether the mapping holds, and set out the gaps as arguments.
Who it's for: patent owners facing an invalidity contention in litigation or a post grant proceeding, and the law firms defending those claims once the opposing party's prior art mapping arrives.
Where invalidity mappings go wrong
Prior art documents are sometimes mapped inaccurately to the claims of the subject patent, which can undercut your assertions. Two mistakes cause most of it.
Wrong assumptions about scope
The technical scope of the prior art is assumed to be wider than what the reference actually discloses.
Overstated similarity
The evidence is said to resemble the claim limitations where the resemblance doesn't hold.
What we check
We focus on the technical gaps and set out the differences in detail, then write comments and arguments in an easy-to-read report.
| The contention says | Our rebuttal tests | |
|---|---|---|
| The reference | The prior art teaches the claimed subject matter | What the reference technically discloses, and how far its scope really reaches |
| The mapping | Each limitation is met by the cited evidence | Each limitation against the evidence, one at a time |
| The outcome | The claims are invalid | Where the reference falls short, argued in detail |
A rebuttal is not an invalidity search
Invalidity search
Goes looking for prior art that could undermine a patent.
Rebuttal
Starts from art already cited against the patent and tests whether it does what the other side says. It is close reading, not searching.
The two are often used together, since a rebuttal may show that no cited reference reaches the claimed subject matter.
What to bring
- The invalidity contention, with its claim charts and the prior art references it cites
- The subject patent and its file history, since prosecution statements shape how a limitation is read
- Any claim construction positions already exchanged
- Anything counsel has already drafted, so the technical comments line up with the legal position
How it gets used
- The technical gaps become the substance of a written response, an expert declaration, or a patent owner's preliminary response
- The analysis shows which claims to press, and whether amendment is worth considering
- A clear report keeps the reasoning available to the whole team
An invalidity contention is an argument. We test it reference by reference, limitation by limitation.
What you receive
- An assessment of how each cited prior art reference was mapped to the claims
- Identification of the technical gaps between the cited art and the claim limitations
- Detailed comments and arguments rebutting the assertions of the invalidity analysis
- An easy-to-read report documenting the findings
Frequently asked questions
What is rebuttal of invalidity contention?
It is a technical response to an argument that a patent is invalid over prior art. Prior art documents are sometimes mapped inaccurately to the claims, often because the technical scope of the prior art has been assumed wrongly, or because similarity between the evidence and the claim limitations has been claimed where it does not hold. The rebuttal identifies those differences and argues them in an easy-to-read report.
How is it different from an invalidity search?
An invalidity search goes looking for prior art. A rebuttal starts from art that has already been cited against the patent and tests whether it does what the other side says. The work is close reading rather than searching: comparing the disclosure of each reference with each claim limitation, and showing where the reference falls short.
What do we need to supply?
The invalidity contention itself, with the claim charts and the prior art references it cites. The subject patent and its file history matter too, because prosecution statements shape how a limitation is read. If claim construction positions have been exchanged, those help, since a rebuttal argument has to sit inside the construction in play.
How is the rebuttal used afterwards?
Counsel uses it to answer the invalidity contention. The technical gaps become the substance of a written response, an expert declaration, or a patent owner's preliminary response in a post grant proceeding. The same analysis also informs strategy: if one reference survives scrutiny while others do not, the owner knows which claims to press and whether amendment is worth considering.
Answer the invalidity contention
Send us the contention, the cited references and your deadline, and we'll scope the rebuttal.
