The key exhibits for telling the story of invention tend to be laboratory notebooks and the regular project reports that track a team’s developments. These two sets of records can be effectively used in tandem. Laboratory notebooks are good sources to prove that a particular event happened on a particular date, and to show that the inventor appreciated its importance.
Simple statements of success are important to show that the scientist recognized the significance of a development. Even remarks such as “Wow, it worked” can be golden in litigation. Otherwise, it is difficult to have an inventor credibly recount an invention story five, ten, or fifteen years later in litigation.
A team’s regular project reporting provides a good place for more detailed invention statements. These may discuss when the team overcame interim hurdles, or learned why things were (or were not) working. These remarks can later be used to prove that the inventors overcame conventional wisdom—another key criteria for beating an obviousness challenge.
It is a good idea for in-house counsel to be involved at these points in development, to help the team record these developments in the best possible light. To be useful in litigation, these statements need to be nonprivileged, and thus separate from the more formalized and privileged records of invention that might be generated for obtaining patents.
Recording failures can be as important as memorializing success. False starts along the path of invention help show that the invention wasn’t obvious. Whereas a challenger will try to argue that the patentee used known techniques to meet a known goal, the patentee will want evidence that the results were not predictable. Therefore, failures can rebut an obviousness challenge.
Note, however, that failed experiments can be trouble. Challengers may seize upon failures to show that the inventors are not entitled to claim a broad “genus” under the written description requirement. Failures may suggest that the inventions are not enabled. Failures may also show that an inventor lacked complete conception of an invention.
Once a patent application has been filed, statements disparaging the claimed technology are particularly problematic, not only for a trial story, but also for the duty to disclose. Accordingly, while failed experiments may help beat obviousness, these same failures may be problematic for other reasons. A good approach is to record the data but avoid elaborating on failures.