Found exclusively on the SMU STLR web site, the E.D. Texas Update is a continuously updated blog of recent IP cases decided in the U.S. District Court for the Eastern District of Texas. We encourage you to check back regularly.
February 2011
The Ohio Willow Wood Co. v. Thermo-Ply, Inc. (E.D. Tex. Feb. 3, 2011).
Decided:
February 3, 2011
Plaintiff, The Ohio Willow Wood Company, (“Willow Wood”), filed suit against Defendant, Thermo-Ply, Inc. (“Thermo-Ply”), alleging infringement of forty-four claims of United States Patent No. 7,291,182 (“the ‘182 patent”). The ‘182 patent discloses prosthetic liners made from a fabric coated with gel, or rubber, that substantially conforms to an amputee’s residuum when worn.
Thermo-Ply asserted several affirmative defenses, one of which was that, in light of the prior art at the time the alleged invention was made, the claims of the ‘182 Patent are invalid and unenforceable under 35 U.S.C. §103, as being obvious to one skilled in the art to which the alleged invention relates.
On June 12, 2009, Thermo-Ply moved for summary judgment, on the grounds that all asserted claims are invalid as either anticipated or obvious and the court granted the motion on November 20, 2009. The court explained claimed invention is un-patentable if the differences between the invention and the prior art “are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art.” 35 U.S.C. § 103(a). The court then ruled that all claims of the ’182 patent asserted by Willow Wood against Thermo-Ply were invalid as an obvious combination of two other already existing patents, the Silosheath and the Klasson patent, and already known techniques in the field.
The final judgment rendered much of the ‘182 patent invalid so the Federal Circuit Court granted the parties’ joint request to remand so that this court could consider whether its invalidity judgment should be vacated. However, the court held that the judgment of invalidity as ripe for consideration by the Circuit Court and that vacating the judgment would impose unnecessary costs on other parties and courts. Thus, the court concluded that it was not a case where the circumstances justify vacating its summary judgment order that many of claims of the ‘182 patent are invalid as obvious.
Summary by Jesse Cromwell, Article Editor
Input/Output, Inc. v. Sercel, Inc., 2007 WL 6196070 (E.D. Tex. 2007).
Decided:
December 19, 2007
On October 20, 2006, the Plaintiffs Input/Output, Inc. and I/O Sensors, Inc. (collectively referred to as “I/O”) filed a patent infringement action against Sercel, Inc. (“Sercel”) asserting United States Patent No. 5,852,242 (“the ′242 Patent”). The claim construction briefs regarding the ′242 Patent, or more specifically, the Plaintiffs' Opening Claim Construction Brief and Sercel, Inc.'s Claim Construction Brief, were before the Court.
The Court determined that patent infringement claims involve two steps. First, the patent claims must be construed, and, second, the claims must be compared to the allegedly infringing device. The Court looked to the decision in Phillips v. AWH Corp for guidance on the legal principles of claim construction. According to the Court’s interpretation of the case, the Federal Circuit had begun allotting far greater deference to the intrinsic record than to extrinsic evidence. Additionally, the Federal Circuit expressly ruled that the law of claim construction was to remain intact underscoring the importance of recognizing that the person of ordinary skill in the art “is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” The Federal Circuit reiterated the importance of the specification, noting that “the specification ‘is always highly relevant to the claim construction analysis.’” Finally, the Federal Circuit curtailed the role of extrinsic evidence in construing claims.
The Court also utilized many other principles of claim construction not addressed in Phillips. For example, the Court was mindful of the “heavy presumption” in favor of construing claim language as it would be plainly understood by one of ordinary skill in the art. Also, claim construction is not meant to change the scope of the claims but only to clarify their meaning. To respect a patent's presumption of validity a court should hold a claim indefinite only after reasonable efforts at construction prove futile.
There were a variety of issues before the Court in the instant suit. Both parties agreed that two terms required construction, while there were eight terms that Sercel asserted required construction for which I/O asserted no construction was necessary. Finally, the parties agreed that three terms invoked a means plus function analysis. The Court then undertook a systematic discussion and analysis of all the terms the parties were in dispute over. After the analysis, the Court either recommended its desired construction of the term in question, or, instead, determined that no further construction was necessary. Out of convenience to the reader, the Court attached an Exhibit A to its opinion providing a table clearly showing the Court’s treatment and recommendation for each term in question. The Exhibit should be consulted by the reader of this summary if he desires a more detailed account of the terms in question, and the Court’s treatment of them.
Summary by Grant Cohen, Articles Editor
January 2011
Advanced Technology Incubator, Inc. v. Sharp Corporation et al
Decided: 01/07/2011
Plaintiff Advanced Technology Incubator, Inc. (“ATI”) filed a patent infringement suit against the following defendants: Sharp Corporation (“Sharp”), Sharp Electronics Corporation (“SEC”), Dai Nippon Printing (“DNP”), and DNP Color Techno Kameyama Co, Ltd. (“DNP Color”). The plaintiff alleged that defendants' products infringed on ATI's U.S. Patent No. RE 37,682. The ‘682 patent teaches a manufacturing process for a light influencing element, or color filter, where the color filter is made by the injection of color into an opening of a substrate by an inkjet type injection head. ATI alleged DNP and/or DNP Color manufactures color filters in one of Sharp’s plant using ATI’s patented process. The plaintiff alleged that Sharp installed these infringing color filters into Sharp branded LCD Televisions. Therefore, the plaintiff alleged that defendants infringed the ‘682 patent under 35 U.S.C. § 271 because defendants imported without authorization products made by the claimed processes of the ‘682 patent. In an amended complaint, plaintiff further alleged that defendants also infringed U.S. Patent No. RE 36,711 also under 35 U.S.C. § 271. Both the '682 and '711 patents were reissue patents and had a common specification. The plaintiff asserted claims 16, 18, 20, 22, 25, 26, and 29 of the '682 patent and claims 4, 8, and 26 of the '711 patent.
The defendants denied any infringement and replied with numerous affirmative defenses. Both defendants alleged the affirmative defenses of non-infringement, invalidity, waiver, laches, estoppel, and equitable estoppel. Both defendants specifically alleged that claim 26 of '711 was invalid and that claims 22, 25, 26, and 29 of the '682 were also invalid. The defendants also asserted that the amendment of claim 26, which was corrected by a certification of correction, was improper.
After the Markman hearings, on March 11, 2009, the Magistrate Judge provided claim construction of the thirteen disputed terms between the plaintiff and the defendants. Both parties objected to the Magistrate's claim construction. The Court reviewed the Magistrate's claim construction order and issued an order affirming the Magistrate Judge's construction for all but three of the disputed terms.
After the Court Order, plaintiff filed permission to file summary judgment motion on some of the affirmative defenses, arguing that these affirmative defenses do not raise fact issues in need of resolution. ATI requested summary judgment as to defendants' assertion that certain claims were invalid, and with respect to the affirmative defenses of laches, acquiescence, waiver, estoppel and 35 U.S.C. §§ 286, 287 and 288.
Regarding, the first issue in plaintiff's request to file for summary judgment motion, the defendants replied that these issues are unsuitable for resolution upon summary judgment because they should be decided only after other legal issues are resolved and/or they raise genuine questions of material fact that cannot be properly determined via summary judgment. Further, defendants filed a summary judgment motion and sought a determination that claim 26 of the ‘711 patent was invalid due to (1) the improper introduction of new matter and (2) indefiniteness for causes of action arising after a certificate of correction (“CoC”) issued in connection with that claim because the CoC was invalid. The defendants' also sought motion for summary judgment of non-infringement of claims 16, 18, 20, and 29 of the ‘682 patent and claim 8 of the ‘711 patent. In response, ATI responded that claim 26 of the ’711 patent, as corrected in the CoC issued by the United States Patent & Trademark Office (“USPTO”) was presumptively valid. In contrast, defendants alleged that the corrected claim 26 was invalid pursuant to either 35 U.S.C. § 251 or § 255 and therefore the presumption of validity did not exist. The Court found that claim 26 of the ‘711 patent improperly included “new matter” in violation of 35 U.S.C. § 251 and that certificate of correction impermissibly broadened the scope of claim 26 in violation of 35 U.S.C. § 255. Accordingly, the Court recommended defendants’ motion for summary judgment of invalidity of claim 26. However, the Court denied defendants’ motion for summary judgment of non-infringement of claims 16, 18, 20, and 29 of the ‘682 patent and claim 8 of the ‘711 patent.
Regarding the second issue in plaintiff's request to file for summary judgment motion, the Court found that under the facts presented, there is a genuine issue of material fact as to whether plaintiff delayed in filing suit on the ‘711 patent, and that there is a fact issue as to whether that delay prejudiced or injured defendants. Similarly, the Court found that defendants have raised a fact issue for the affirmative defense of estoppel. Therefore, plaintiff’s motion for summary judgment as to defendants’ affirmative defense of laches and estoppel was denied. Because defendants did not raise a triable fact issue for its other affirmative defense, summary judgment was granted as to the affirmative defenses of acquiescence, waiver, and 35 U.S.C. §§ 286, 287, and 288.
Subsequently, before trial, in accordance with the Court’s order, a mediation conference was held, which resulted in settlement.
Srinivasan Chakravarthi, Articles Editor
November2010
Mettler-Toldeo, Inc. v. Fairbanks Scales, Inc., No. 9:06-CV-00097 (E.D. Tex. 2010)
Decided:
November 9, 2010
Plaintiff Mettler-Toledo, Inc. (Mettler-Toledo) filed suit against Defendants B-Tek Scales, LLC, (B-Tek) and Fairbanks Scales, Inc. (Fairbanks), alleging infringement of United States Patent Nos. 4,804,052 (‘052), 4,185,547 (‘547), and 4,955,441 (‘441). Fairbanks was dismissed from the suit on May 10, 2007. B-Tek’s counterargument with respect to the ‘441 patent was that the failure to disclose United States Patent No. 2,901,235 (‘235) to the Patent and Trademark Office (PTO) during prosecution of the ‘441 patent was inequitable conduct, as was the failure to disclose United States Patent No. 1,462,808 (‘808) to the PTO with regards to the ‘547 and ‘052 patents. After the case was submitted to the jury, a one day bench trial was held on January 28, 2009, on B-Tek’s inequitable conduct claims.
In order for the court to declare patents-in-suit unenforceable due to inequitable conduct, B-Tek had to demonstrate by clear and convincing evidence that there was: (1) an affirmative misrepresentation of material fact, a failure to disclose material information, or submission of false material information, and (2) an intent to deceive the examiner. Mettler-Toledo did not dispute the first prong, and the court concluded that the ‘235 patent was material in deciding whether to allow the ‘441 patent to be issued. As to the second prong, however, B-Tek fell short of showing that Mettler-Toledo made a deliberate decision to withhold a known material reference, the ‘235 patent. While inequitable conduct may be inferred from circumstantial evidence, the inference must be the single most reasonable inference able to be drawn from the evidence. Here, the evidence presented was open to more than one interpretation; therefore, intent to deceive was not the single most reasonable inference to be drawn from the evidence. Thus, B-Tek failed to establish the requisite threshold level of intent to deceive.
As to the ‘547 and ‘052 patents, B-Tek’s position was relatively confusing as to whether it actually asserted that there was inequitable conduct with respect to these patents. Assuming that the claims against these two were not dropped, the evidence showed that the ‘808 patent was material; however, the evidence fell far short of demonstrating that there was intent to deceive by clear and convincing evidence.
The jury rendered a verdict in favor of B-Tek on the issues of infringement of the ‘052, ‘547, and ‘441 patents. As to the inequitable conduct claim, B-Tek failed to demonstrate by clear and convincing evidence that Mettler-Toledo had the requisite intent to deceive when it failed to submit the ‘235 and the ‘808 patents to the PTO during prosecution of the patents-in-suit. The Final Judgment was signed November 9, 2010, disposing of all claims.
Summary by Calie Carrick, Notes Editor
September 2010
O2 Micro Int’l, Ltd. v. Beyond Innovation Tech. Co., 2:04-cv-00032-CE, 2009 WL 1109357 (E.D. Tex. 2010)
Decided:
September 27, 2010
O2 Micro International Limited (“O2 Micro”) brought suit on January 20, 2004 against defendants, Beyond Innovation Technology Company Limited (“BiTEK”), SPI Electronic Company Limited, FSP Group, and Lien Chang Electronic Enterprises Company Limited for infringement of several claims on U.S. Patents Nos. 6,259,615 (“the 615 patent”), 6,396,722 (“the 722 patent”), and 6,804,129 (“the 129 patent”). The patents at issue are inverter controller chips and modules that incorporate those controllers as a high efficiency adaptive DC/AC converter. BiTEK specifically denied that its controllers or modules infringed on the patent and further deny O2 Micro’s claims that BiTEK willfully infringed or induced others to infringe on the patent.
A jury trial was held May 8-15, 2006 solely on the claims against BiTEK, resulting in a finding against BiTEK for inducement and contributory and willful infringement of claims 1 and 15 of the 615 patent and claim 16 of the 722 patent. The court entered a permanent injunction against BiTEK and BiTEK appealed.
The Court of Appeals for the Federal Circuit reversed the finding of the district court, holding that the court erred in not construing the “only if” language in the claims of the two patents. The apparent prejudice caused by this error resulted in the Court of Appeals vacating the jury verdict, final judgment, and permanent injunction. The court remanded the case to the district court for opinion construing the “only if” language and a new jury trial. On April 22, 2009, Judge Charles Everingham IV issued his opinion construing the language. Judge Everingham adopted a broad interpretation largely similar to that proposed by BiTEK in its briefing on the issue rather than the narrow interpretation proposed by O2 Micro. Following this opinion, the court re-set the case for jury trial, which was subsequently held on July 27, 2009.
The Judge issued his Findings of Fact and Conclusions of Law on July 2, 2010, but these were sealed for fear that confidential information sought to be shielded under the court’s previously issued protective order would be revealed by the findings. The court’s order on September 27, 2010 shed light on these findings and final judgment was rendered against BiTEK for inducing infringement of the 615 and 722 patents held by O2 Micro.
Further, the court noted that its findings warranted reinstatement of the identical permanent injunction that was previously issued on March 21, 2007 before being vacated by the Court of Appeals. Under the injunction, BiTEK is not to participate or allow others within its control to manufacture, use, sell, or import any inverter controllers or modules that infringe on the 615 patent or the 722 patent. The court goes on to state that this includes, but is not limited to inverter controllers having model numbers BIT 315 or BIT 316 or belonging to those same families or any colorable imitation. Finally, the court ordered BiTEK to “label prominently” controllers or modules covered by this order, and to include on that label “Not for Sale in, Use in, or Importation into the United States.”
Summary by John Prudhomme, Articles Editor
Ameranth, Inc. v. Menusoft Systems Corp., 2010 WL 1610079 (E.D. Tex. 2010).
Decided:
September 20, 2010
Plaintiff Ameranth, Inc. (“Ameranth”) asserts infringement of United States Patent Nos. 6,384,850 (“the ′850 patent”), 6,871,325 (“the ′325 patent”), and 6,982,733 (“the ′733 patent”) against Defendants Menusoft Systems Corp. and Cash Register Sales & Service of Houston, Inc. (collectively, “Menusoft”). On June 28, 2007, Ameranth filed a complaint in the Eastern District of Texas Marshall Division, alleging that Menusoft was engaged in the offer, sale, installation, maintenance, or use of restaurant or food service information technology systems covered by patent.
Ameranth is the creator of “breakthrough solutions” for the food service and hospitality industry which, for the first time, allowed hospitality enterprises to operate on a consistent, single set of data across an entire enterprise. Ameranth alleged that Menusoft employees visited their booths at trade shows and were given detailed demonstrations of Ameranth’s 21CR technology. In 2001, Menusoft released a Digital Dining product which Ameranth alleges adopted the 21CR technology. Ameranth made repeated attempts to contact Menusoft about licensing their technology in 2007, but no response was ever received. Pursuant to Menusoft’s unresponsiveness, Ameranth brought suit against Menusoft for patent infringement.
Menusoft defended the lawsuit based on evidence that the version of Digital Dining for which Ameranth alleged infringement was substantially similar to earlier versions of the program which the company released in 1996. Menusoft also claimed that the public appearance and showing by both Menusoft and Amersanth at 1996, 1997, and 1998 trade shows were prior art under 35 U.S.C. §§ 102 and 103.
On September 20, 2010, the jury held that Ameranth had failed to prove, by a preponderance of the evidence that Menusoft directly infringed, contributed to infringement, or induced infringement on either the ‘850 patent, the ‘733 patent, or the ‘325 patent. The jury also held that all claims as to the three patents were invalid because they were rendered both anticipated and obvious by the prior art.
Summary by Sophie Mathews, Articles Editor
August 2010
ReedHycalog UK, Ltd. v. Diamond Innovations, Inc., 2010 WL 3238312 (E.D. Tex. Aug. 2010)
Decided: August 12, 2010 On August 15, 2008, Plaintiffs ReedHycalog UK, Ltd. and ReedHycalog, LP (collectively “ReedHycalog”) brought suit against Defendant, Diamond Innovations, Inc. (“DI”), alleging DI infringed upon several patents held by ReedHycalog. ReedHycalog claimed that within the six years from ReedHycalog filing its Complaint, DI had manufactured and sold partially leached polycrystalline diamond compact (“PDC”) cutters and inserts (individually and collectively “PDCs”) wherein at least a portion of the catalyzing material from the polycrystalline diamond matrix were removed by a leaching process. DI sold such partially leached cutters to various drill bit manufacturers and continued to manufacture and sell the cutters. Additionally, DI had manufactured and sold partially leached polycrystalline diamond cutters having a diamond table in which at least a portion of the catalyzing material had been removed from a first region of the diamond table while the catalyzing material was present in another second region of the diamond table, and wherein the depth of the first region was greater than 0.1 mm as measured normal to a plane containing the top planar surface of the partially leached polycrystalline diamond cutter. Finally, ReedHycalog alleged DI had performed one or more leaching processes to remove cobalt from a portion of the diamond table of the partially leached polycrystalline diamond cutters it had manufactured and sold during this period. ReedHycalog alleged that these actions by DI infringed upon the various patents they owned. ReedHycalog asked the U.S. District Court for the Eastern District of Texas—Tyler Division to provide any and all relief the Court deem just and proper.
DI denied ReedHycalog’s various allegations claiming that the various patents ReedHycalog claims DI infringed were never duly and legally issued. DI supplemented its claim stating that they did not infringe on any patents by bringing forth several affirmative defenses. Among the affirmative defenses DI utilized are most notably: 1) The claims of the Patents in Suit are invalid and unenforceable for failing to satisfy one or more condition of patentability set forth in Part II of Title 35 of the United States Code, including but not limited to Sections 101, 102, 103, 112 and 132; 2) Plaintiffs are estopped from construing any valid claim of the Patents in Suit to cover or include, either literally or by application of the doctrine of equivalents, any product, method or system manufactured, used, imported, sold, or offered for sale by DI because of admissions and statements made to the United States Patent and Trademark Office (“USPTO”) in the Patents in Suit or related patents or because of amendments made to the claims of the Patents in Suit or related patents during the prosecution of the applications leading to the issuance of the Patents in Suit or related patents; and 3) Plaintiffs are estopped by reasons of prosecution history estoppel from asserting infringement of the Patent in Suit by application of the doctrine of equivalents.
The Court did not buy DI’s affirmative defenses holding that DI did in fact unlawfully infringe upon ReedHycalog’s patents. ReedHycalog’s patents were valid and legal, and the Court awarded damages in favor of ReedHycalog.
Summary by Grant Cohen, Articles Editor.
Fiber Sys. Int’l, Inc. v. Applied Optical Sys., Inc., 2:2006-cv-00473, 2010 WL 3064286 (E.D. Tex. 2010)
Decided: August 3, 2010
Plaintiff Fiber Systems International, Inc. (“FSI”) filed a patent infringement suit against defendant Applied Optical Systems, Inc.'s (“AOS”). The suit filed on November 14, 2006, requested the Court for preliminary and permanent injunctions prohibiting AOS’s sale of products alleged to use technology taught by FSI’s patents. In particular, FSI alleged that AOS was selling products taught by US Patent No. 6,305,849 entitled “Multi-Channel Fiber Optic Connector.” The ‘849 relates to a multi-channel fiber optic cable connector for connecting the terminal ends of two multi-channel fiber optic cables.
FSI further alleged that FSI’s former employees, who developed FSI’s fiber optic connector – the technology relating to the ‘849 patent, created AOS. FSI alleged that these former employees manufactured and offered to sell a competing fiber optic cable connector identical to FSI’s connector. Consequently, FSI requested the Court to award monetary damages, prejudgment interest, attorney’s fees and costs. The Court preliminarily enjoined AOS from selling the accused product to non-governmental entities and set an injunction bond of $250,000.
In response, AOS raised affirmative defenses and counterclaims that comprised: patent invalidity, inequitable conduct, impermissible broadening of claims, antitrust violations, unfair competition, and fraud and negligent misrepresentation. FSI made a motion for summary judgment, which was partially granted. The Court denied FSI’s motion for summary judgment for inequitable conduct, unfair competition, fraud, and negligent misrepresentation. However, the Court granted summary judgment for patent invalidity and impermissible broadening of claims. The Court found that the antitrust counterclaim would pose a significant risk of confusion for the jury, and therefore, sua sponte ordered a separate trial for AOS’s antitrust counterclaim.
After Markman hearings, the Court rejected FSI’s proposed constructions on all the disputed terms and adopted AOS’s constructions for two of the four disputed terms. Subsequently, a jury found that AOS's products do not infringe the ‘849 patent. AOS filed a motion to dissolve the preliminary injunction and to retain FSI’s injunction bond, which was granted in view of the jury's verdict of non-infringement.
In response, FSI argued that the Court should not dissolve the preliminary injunction because FSI anticipated pursuing post-trial legal remedies. The Court responded that the jury’s verdict raised a substantial question regarding FSI’s infringement claim, and therefore, the preliminary injunction must be dissolved. The Court also denied FSI’s request that the Court should not retain FSI’s injunction bond because there was no authority to support FSI’s argument that a party may waive its right to wrongful injunction damages by failing to raise defenses.
Summary by Srini Chakravarthi, Articles Editor.
Tendler Cellular of Tex., L.L.C. v. AT&T Mobility, L.L.C. et al, 6:2009-cv-00115 (E.D. Tex. 2010).
Decided: August 10, 2010
Plaintiff, Tendler Cellular of Texas, filed suit against AT&T Mobility, Cellco Partnership d/b/a Verizon Wireless, Sprint Spectrum, and Nextel Operations, collectively the Defendants, for patent infringement. On November 4, 2008, United States Patent Office issued a patent for Tendler Cellular’s “Location Based Information System.” The Plaintiff, in its complaint, alleged that each of the Defendants had been making, selling, using products or systems that infringe on their patent and that they had been damaged as a result of Defendants’ infringing conduct. More specifically, they alleged each Defendant’s infringement was based, at least in part, on their providing of location based services, including E911 services, to their cellular service subscribers.
Tendler Cellular asked the court to find the Defendants liable in an amount that adequately compensates for their infringement, which, by law, could not be less than a reasonable royalty, together with interest and costs as fixed by the Court under 35 U.S.C. ' 284. Tendler Cellular also asked the court for an issuance of an injunction upon the belief that the Defendants would continue to infringe on their patent.
The Defendants generally denied the allegations and further claimed that the patent was invalid for failure to comply with one or more provisions of the patent laws of the Title 35 of United States Code, that they were required by Federal law to provide the services, and that the patent was unenforceable due to inequitable conduct during the prosecution of the patent. The Defendants also filed counterclaims for declaratory judgments that the patent was invalid.
The Parties eventually came to a settlement agreement and the court dismissed all the claims and counterclaims asserted in the suit with prejudice. The court entered final judgment on August 10, 2010 ordering that all parties take nothing and that all pending motions were denied as moot due to the motions filed jointly by the parties for dismissal and the orders as a result of those motions.
Summary by Jesse Cromwell, Articles Editor
May 2010
Saxon Innovations, LLC v. Apple Inc., et al., 6:2008-cv-00265 (E.D. Tex. 2010).
Decided: May 26, 2010
Plaintiff, Saxon Innovations, LLC, filed suit against Defendants, Apple, Inc., Gateway, Inc., Gateway Companies, Inc., Acer America Corp., Acer, Inc., Hewlett-Packard Co., and Dell, Inc. (collectively “Apple”) in the United States District Court for the Eastern District of Texas alleging patent infringement. Specifically, Saxon alleged that Apple infringed upon United States Patent No. 5,235,635 (the “635 Patent”), titled “Keypad Monitor with Keypad Activity-Based Activation.”
Saxon claimed all rights and interests in the 635 Patent, which protects a “keypad monitor and associated circuitry [that] is activated in response to received clock signals from an external clock source and deactivated in the absence of clock signals.”
Defendants filed a motion for summary judgment of invalidity of all claims of the 635 Patent, arguing that they are indefinite “because each of the independent claims contains at least one means-plus-function claim element for which the patentee failed to disclose any identifiable structure.” Specifically, they argued that “clock detector 109,” “any key down logic 105,” and “code logic 103” were inadequate disclosures of structure for performing their functions because they are simply “black boxes.”
Plaintiff responded by arguing that its claims are not indefinite because “one of ordinary skill in the art would understand the circuitry corresponding to each box.”
The court first elucidated the legal standard for summary judgment in patent cases: “when there is [sic] no genuine issues as to any material fact and the moving party is entitled to judgment as a matter of law.” Furthermore, a patent is presumed valid. The burden is on the party challenging this presumption to prove invalidity by clear and convincing evidence. Whether a patent claim is indefinite is a question of law and proper subject matter to be considered on a motion for summary judgment. The court then stated the rule as follows: “If there is no structure in the specification corresponding to the means-plus-function limitation in the claims, the claim will be found invalid as indefinite.”
The court then addressed the validity of each of the three contested claims: (1) Clock Detecting Means; (2) Output Means; and (3) Means for Generating. With regard to the Clock Detecting Means, both parties conceded that “patent documents need not include subject matter that is known in the field of the invention and is in the prior art,” but they disagreed whether “clock detector” circuits were well-known to skilled artisans such that further disclosure was unnecessary. The court sided with Saxon and ruled that a “clock detector” was a well-known device that performed a common function, such circuitry having been well-known more than a decade prior to the date of the 635 Patent. Thus, the court found that “clock detector 109” was an adequate structure corresponding to the claimed functions and that the claim terms are not indefinite. With regard to the Output Means, the court’s findings were identical to those of the Clock Detecting Means: “any key down logic 105” is adequate structure and the claim terms are not indefinite because “one of ordinary skill in the art would have understood the structure corresponding to the claimed functions was . . . a well-known structure used to perform a common function. With regard to the Means for Generating, the court also found its claim, “code logic 103,” to be adequate structure and its claim term not indefinite because “one of ordinary skill in the art would have understood the ‘635 Patent to expressly disclose “code logic 103” as consisting of two encoders’” and that such encoders were “well-known structures in the art used to perform common functions.” Consequently, the court denied the defendants’ motion for summary judgment.
In its final judgment on a motion to dismiss, the court ruled that the parties take nothing and that all pending motions be denied as moot. The court dismissed the claims of all parties except Defendant Gateway Companies, Inc., which the court severed from the action and stayed until that new case’s bankruptcy proceedings could be resolved. Furthermore, the court ruled that all claims, counterclaims, and third-party claims be dismissed in their entirety.
Summary by David S. Dubinsky, Articles Editor
March 2010
Fast Memory Erase, LLC v. Spansion, Inc., 2010 WL 363498.
Fast Memory Erase, LLC filed a patent infringement suit against Spansion, Inc., Intel Corportion, Numonyx, Inc., Stmicroelectronics, Inc., Nokia Corporation, Sony Ericsson Mobile Communications, Motoral, Inc., and Apple, Inc. The suit, filed on June 9, 2008, alleged infringement of claims 1 and 16 of U.S. Patent No. 6,236,608 (the ‘608 patent) and claim 1 of U.S. Patent No. 6,303,959 (the ‘959 patent). These patents cover a method for erasing memory cells in a semiconductor device. The court only considered the claim under the ‘959 patent; claims 1 and 16 of the ‘608 patent are being re-examined by the U.S. Patent and Trademark Office.
The ‘959 patent reduces sources leakage, which occurs when the memory of a semiconductor device is erased. Fast Memory claims that the patent is “most effective in erasing non-volatile flash memory devices.” The issue is whether the patent is limited to one specific method of erasing flash memory, source erase, or whether it is applicable to other procedures, such as channel erase, gate erase, and drain erase. Defendants argue that the patent’s specification limits it to source erase. Fast Memory argues that the specification language “source leakage” refers to a reduction of source leakage in all procedures: “an unwanted and slow escape or entrance of particles or material to ground or other parts.”
The patent specification only discussed source leakage in reference to source erase, and the “claims of a patent cannot be of broader scope than the invention that is set forth in the specification.” While Fast Memory pointed out no language in the specification that applied the patent to other erase procedures, Defendants cited more than six statements “in the specification describing the invention as limiting leakage during source erase.”
The court found that the specification itself limited “source leakage” to source erase. Since “a person of ordinary skill in the art would clearly understand that the invention refers to source erase, not to other type of erase procedures,” the court construed “source leakage” as “leakage from the source terminal to the substrate terminal that occurs during source erase.”
Summary by Shayla Edwards, Associate Casenote & Comment Editor
February 2010
FotoMedia Technologies, LLC v. AOL, LLC, 2009 WL 2175845.
Decided: July 21, 2009
Plaintiff FotoMedia Technologies, LLC (“Fotomedia”) filed a lawsuit for patent infringement against two different sets of defendants.
The defendants in the first lawsuit were AOL LLC, Photobucket.com, Inc., Shutterfly Inc., CNET Networks, Inc., and Yahoo! Inc.. The defendants in the second lawsuit were Alltel Communications, LLC, Sprint Spectrum, L.P. and Cellco Partnership. Both suits involved the same two patents.
The ‘936 patent describes a system “used for creation and distribution of electronic postcards and other formats of electronic images.” The ‘774 patent, the predecessor of the ‘936 patent, allows users to transfer digital images to a server where the images can then be processed into a “presentable display to be viewed by other individuals” who also receive a notification from a server.
Plaintiffs asserted that a similar technology existed at the time of the patents’ filing, but that none of the then existing technologies allowed for the transfer of digital pictures as the ‘936 and ‘774 systems allowed.
The other patent involved in the litigation is the ‘231 patent, which is “a system and method of controlling access to image metadata-information such as album titles, image captions, tags, comments, and other information related to an image-separate from access to the image itself.”
The general issue addressed in the court’s opinion is how the claims in the patents should be constructed. The court stated that the ascertainment of claim meanings requires an examination of three primary sources: “the claims, the specification, and the prosecution history.” The specification must contain a written explanation of the invention that “enables one of ordinary skill in the art to make and use the invention.” In addition, the court stated that the claims must be read in light of the accompanying specification. However, it is the purpose of the claims, not the specification, to set forth the limitations of the patentee’s claims.
Using the Federal Circuit’s decision in Phillips v. AWH Corporation as a guidepost, the court stated that “the claims of a patent define the invention to which the patentee is entitled the right to exclude,” which means that the words used in the claim are to be generally given their customary and ordinary meaning. The ordinary and customary meaning “is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Overall, this case highlights the importance of precisely drafting patents.
Summary by Aida Wondwessen, Casenote & Comment Editor
January 2010
Creative Internet Advertising Corp. v. Yahoo! Inc. 2009 WL 4730622.
Judge John Love granted in part plaintiff Creative Internet Advertising Corp.’s (CIAC) motion for entry of judgment on the verdict. A jury previously found defendant Yahoo! guilty of patent infringement regarding its use of CIAC’s IMVironments in the popular Yahoo! Messenger program. CIAC filed this post-verdict motion arguing that it is entitled to a royalty because Yahoo! continues to derive revenue from its patent. Yahoo! argues that a royalty is not warranted in this instance because Yahoo! removed IMVironments from its messenger program shortly after they were found guilty of patent infringement.
Applying the four factor test of eBay v. MercExchange LLC, the Court found that CIAC had not established irreparable injury that could not be remedied through monetary relief. Therefore, an ongoing royalty is necessary in this case. Yahoo! argues that it removed the infringing portion of its messenger program, and therefore, no royalty is necessary. The company further maintains that CIAC has the burden of proving the appropriateness of a royalty. CIAC believes that after a verdict of infringement, the burden of proof shifts to Yahoo! to prove that infringement of its IMVironments patent has ceased.
The Court ruled that since Yahoo! altered its program, CIAC has the burden of proving that the new version of the Yahoo! Messenger is no more than a “colorable variation” of the older infringing product. After CIAC presented its argument, the Court ruled that, while the graphical representation of IMVironments was removed from the messenger program, the logic of the patent remained. Therefore, Yahoo! must pay CIAC an ongoing royalty. The Court then ordered Yahoo! to pay CIAC $185,694, representing 20% of revenues from the past five months earned from Yahoo! Messenger. Because Yahoo! failed to change the program to stop infringement, it must remit quarterly payments of 23% of the program revenues to CIAC.
Summary by Aida Wondwessen, Casenote & Comment Editor
December 2009
Vasudevan Software, Inc. v. IBM corp., (2009 WL 3784371)
Decided: Nov 13, 2009
Plaintiff Vasudevan Software (“VSi”) brought a patent infringement lawsuit claiming that International Business Machines and Oracle Corporation (collectively "Defendants") infringed on U.S. Patents 6,877,006 and 7,167,864.
Defendants then filed a motion to transfer the case to the Northern District of California. The court noted that under 28 U.S.C. § 1404(a) venue transfers impose a lesser burden on the moving party than forum non conveniens, and that the movant can satisfy the burden by demonstrating “good cause,” in that the transfer is clearly more convenient. However, the relevant factors considered are the same as those in a forum non conveniens context.
The Court granted Defendant’s motion to transfer after considering a number of private and public factors that favored moving the forum to the Northern District of California. First, the Court stated that none of the parties held any ties to the Eastern District of Texas and that the vast majority of witnesses lived in Northern California. Second, most of the relevant documents relating to the patent dispute are located in Northern California, and neither party had any documents present within the Eastern District of Texas. Third, none of the underlying actions in the case took place in Texas. Although Oracle maintained a facility in Plano, the court ruled that the Eastern District held no particular local interest in the outcome of the case. The Court also designated a number of other factors as being neutral in regards to which venue was more convenient. These neutral factors included the attendance of third party witnesses, an expeditious and inexpensive trial, and administrative difficulty due to court congestion. After careful review of all the aforementioned factors, the Court concluded that the Northern District of California was the more convenient forum.
Summary by Kyle Gross, Associate Casenote & Comment Editor
Cies Bisker, LLC v. 3M Co., 2009 WL 4505936 (E.D. Tex. Nov. 25, 2009).
Decided: November 25, 2009
Plaintiff, Cies Bisker, LLC, alleges that Defendants, 3M Company, FLOORgraphics, Inc., News America Marketing Instore, LLC, and News America Marketing In-Store Services, LLC, infringed on their patent (U.S. Patent No. 5,863,632 (“the ‘632 Patent”), which is generally directed to a decorative photographic floor tile comprising an enlarged photographic print to create a visual décor for use in commercial settings.
Specifically, plaintiff alleges that defendants infringed on claims 1-4, 7, 21-24, and 26. In all situations, the Court went through each term in contention and did a claim construction analysis in the resolution of the Parties’ Joint Motion for Entry of Final Judgment. The claims in dispute include: 1) “transparent protective coating” (found in claims 1, 4, and 21); 2) “photographic print” (found in claims 1-4); 3) “graphic print” (found in claim 21); 4) “photographic quality” (in claim 21); and 5) “said photographic print” (in claim 21).
The first dispute considers the constructions for “transparent protective coating . . . defining a barrier to prevent injury to said photographic print from foot traffic and other objects passing over the floor tile.” The only dispute between the parties on these particular claims was whether construction of the term should include a requirement that the coating be five millimeters thick or more. While the plaintiff argued that a construction is not necessary and that the plain meaning should apply, defendants argued that the patentee limited the scope of the claimed protective coating during prosecution to overcome prior art, and thus, plaintiff surrendered a protective coating of five millimeters from the scope of the claims as a result. In analyzing the constructions of “transparent protective coating,” the Court held that the plaintiff’s definition did not render a narrowing of the scope because the description was merely a preferred embodiment and because plaintiff’s claim language at issue did not speak to a specific thickness.
The dispute over “photographic print” involved whether the claim term should include images generated through ink printing. The Court held that defendants met their burden of demonstrating that the patentee has surrendered ink printing because the plaintiff’s limiting statements were made in the background and summary portions of the specification, not in the description of the preferred embodiment, which signals the likelihood that the statement will support a limiting definition of a claim term. However, the Court also held that the defendants’ proposed construction was too narrow.
The primary dispute with the claim term “graphic print” was whether it should include images generated through ink printing, with the plaintiff arguing that it should include it while the defendants arguing that it should not. In determining whose claim construction stood, the Court held that despite the fact that there were different terms in separate claims, they could be construed to cover the same subject matter since the written description and prosecution history indicated that such a reading was proper. Thus, the Court held for the defendants on this point.
The parties’ main dispute over the claim “photographic quality” was whether the term was indefinite. The plaintiff argued that “photographic quality” is a common term such that a person of ordinary skill in the art would understand its meaning, while the defendants argued that a person of ordinary skill in the art would not understand the meaning of “photographic quality.” The Court applied the test for indefiniteness by determining whether a person of ordinary skill in the art would understand all of the language in the claim when read in light of the specification, and held that the term “photographic quality” is not so ambiguous as to render it indefinite.
Finally, the parties disagreed with the indefiniteness of the claim involving “said photographic print.” The Court held that the term “said photographic print” is not indefinite because other terms in other claims served as a proper antecedent basis for giving reasonable meaning to the term “said photographic print.”
Summary by Nadine Kanga, Articles Editor
MHL TEK, LLC v. Nissan Motor Co., (2009 WL 2824731)
Decided: Aug 28, 2009
Plaintiff MHL TEK LLC (“MHL”) filed a claim against several defendants, including Nissan Motor Co. and several other car manufacturers. MHL asserts patent infringement of three different patents: the “516,” the “496,” and the “966.” The ‘516’ patent deals with a tire pressure monitoring system that is designed to improve safety and performance of the car tires. While MHL claims that they invented this “breakthrough” in the field of art, Defendants contend this was a mature field of art as early as 1994. The question at hand is how courts should approach claim construction.
While determining whether MHL asserted a valid infringement claim, the court stated that three primary sources must be examined: “the claims, the specification, and the prosecution history.” The court further states that patent law requires the specification to “contain a written description of the invention that enables one of ordinary skill in the art to make and use the invention.” However, it is the function of the claims, not the specification to define the limitations of the patentees’ claims. “The ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., [. . .] the effective filing date of the patent application.” After weighing the arguments, the court resolved the definition of certain terms within the claim to ultimately determine the scope of the claim. The Court defined “contact” as “touching either directly, or through a conductive seal.” The Court defined the term “conductive” as “capable of allowing a direct current or an alternating current of electricity to pass through it.” The Court defined “conductive elastomer” as “a seal consisting of a rubberlike silicone (or plastic) material which is conductive.” The Court defined the terms “transmission of the signal using a conductive wheel [as an antenna]” as “the wheel rim to act as an antenna by transmitting, as an electromagnetic wave, a signal containing data representative of a value of inflation pressure.”
The Court adopted the construction set forth in their opinion for the disputed patent terms, and the parties were ordered not to refer, “directly or indirectly, to each other's claim construction positions in the presence of the jury” at the trial.
Summary by Aida Wondwesson, Casenote & Comment Editor
October 2009
i4i, L.P. v. Microsoft Corp., (2009 WL 2449024)
Decided: Aug 11, 2009
i4i, L.P., and Infrastructures for Information, Inc. (collectively “i4i”) brought a patent infringement claim against Microsoft Corporation alleging infringement of i4i’s U.S. Patent No. 5,787,449 entitled “Method and System for Manipulating the Architecture and the Content of a Document Separately from Each Other.” The patent covers software that controls document architecture and content, a “metacode map,” that allows a computer to manipulate the structure of documents without using manually embedded command codes. Microsoft Word 2003 and 2007 contain this type of Extensible Markup Language (“XML”) functionality.
A jury found i4i’s ‘449 patent valid and infringed and awarded i4i $200,000,000 in damages. The Court awarded i4i an addition $40,000,000 in enhanced damages after the jury found the infringement to be willful. The Court also granted i4i’s motion for permanent injunction, prohibiting Microsoft from selling Microsoft Word 2003 and 2007 with the infringing XML functionality.
Granting i4i’s motion for enhanced damages, the Court applied the factors from Read Corp. v. Portec, Inc., 970 F.2d 816, 826 (Fed. Cir. 1992): (1) whether the infringement was deliberate; (2) whether the infringer knew of the patent, investigated the scope of the patent and had a good-faith belief that it was invalid or not infringed; (3) the infringer’s behavior during litigation; (4) the infringer’s size and financial condition; (5) closeness of the case; (6) duration of infringement; (7) remedial action taken; (8) motivation for harm; and (9) whether the infringer tried to conceal its conduct.
The Court held that the evidence at trial established Microsoft’s knowledge of i4i’s patent, that Microsoft never presented any evidence that it conducted any investigation into a patent, and never had a good-faith belief of non-infringement. Also supporting the enhanced damages was a lack of remedial action after learning of i4i’s patent, Microsoft’s great financial wealth and command of the market, and legally improper arguments—violating the Court’s instructions—made by Microsoft’s counsel during trial.
Granting i4i’s motion for a permanent injunction, the Court applied the four factor test from eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006): (1) whether the party suffered an irreparable injury; (2) whether other available remedies are inadequate to compensate that injury; (3) whether an equitable remedy is warranted when balancing the parties’ hardships; and (4) whether the public interest would not be disserved by a permanent injunction.
The Court found that i4i “overwhelmingly” showed irreparable injury by Microsoft’s infringement that could not simply be compensated with monetary damages because the companies are in direct competition with each other—Microsoft caused i4i to lose its market share and the opportunity brand recognition. The Court again looked at the size and economic wealth of Microsoft and found that the hardship weighed much more heavily on i4i—custom XML is a small part of Microsoft, but it is central to i4i. Since Microsoft Word does not relate to a compelling public interest, health, or safety, the fourth factor weighs in support of an injunction. The Court also found that the public interest would not be disserved because Microsoft is not required to disable the Word products already sold and is still allowed to provide support for them.
The U.S. Court of Appeals for the Federal Circuit granted Microsoft’s motion for a stay, pending appeal, of the district court’s injunction on September 3, 2009. The Court of Appeals heard oral arguments on September 23, 2009.
Summary by Shayla Edwards, Casenote & Comment Editor
September 2009
Doe v. Myspace (629 F.Supp.2d 663)
Decided: May 22, 2009
The mother of a 15-year-old girl brought a negligence, gross negligence, and strict product liability claim against the popular social website, MySpace. Plaintiff alleged that her daughter “was lured from her home and sexually assaulted by a sexual predator, who communicated with [. . .] and ultimately orchestrated his sexual assault of [her daughter] through the MySpace.com website.” Defendant responded to the complaint by claiming immunity under the Communications Decency Act (CDA), 47 U.S.C. § 230. The CDA provides that “no provider or user of an interactive computer service shall be treated as the publisher or speaker of any information provided by another information content provider.” “Interactive computer service” is defined by the Act as “any information service, system, or access software provider that provides or enables computer access by multiple users to a computer server, including specifically a service or system that provides access to the Internet and such systems operated or services offered by libraries or educational institutions.” The term “information content provider” is defined by the Act as “any person or entity that is responsible, in whole or in part, for the creation or development of information provided through the Internet or any other interactive computer service.” Plaintiff claims that Defendant is not entitled to immunity under the CDA because it “refused to employ reasonable safety measure” on the website and that Defendant was not acting as an information content provider by creating and developing information that led to the sexual assault of Plaintiff’s daughter.
The district court quickly dismissed Plaintiff’s first argument, citing a Fifth Circuit decision holding MySpace not liable for serving as a publisher of ”online third-party-generated content.” The district court considered Plaintiff’s second argument that the Defendant cannot claim immunity under the CDA because it acted as an information content provider, rather than just as a publisher of the content. MySpace prompts users to supply additional personal information, such as “Interests & Personality”, and Plaintiff suggested that this plays a part as an information content provider. While the district court briefly entertained the argument, it ultimately held that prompting users to supply optional additional information is conduct insufficient to hold MySpace as an information content provider. Accordingly, the court granted Defendant’s motion to dismiss.
Summary by Aida Wondwesson, Casenote & Comment Editor