March 2013

Limiting Patent Expert Testimony

A patent expert lacked a basis for opining where the expert had drawn conclusions about activities of the accused infringer’s customers without inspecting any documents or other evidence concerning what the customers actually did. Further, the expert was not qualified to testify concerning a number of secondary considerations of non-obviousness.  Therefore, the court granted in part the defendant’s Daubert motion in XpertUniverse, Inc. v. Cisco Sys., No. 09-157-RGA (D. Del. March 7, 2013). Under Daubert and Federal Rule of Evidence 702, the expert’s testimony was required to be reliable concerning alleged “functionalities” practiced by the defendant’s customers, and concerning alleged secondary considerations of nonobviousness. The plaintiff had evidently conceded that the accused products had “optional functionalities, and that if the end user does not use those features, there is no direct infringement.” Therefore, some proof about customer activities would be necessary to prove indirect infringement. However, the plaintiff’s expert “concluded the customers use the optional features without examining any customer documents or inspecting customer operations to see how the customers actually use the accused Cisco products.” The court explained that the expert has call center expertise and computer science expertise. He can testify reliably about whether technology described in Cisco documents about… Read More »Limiting Patent Expert Testimony

Image Processing Claims Held Patent-Eligible

Patent claims directed to “technology for modifying video signals” are patent-eligible under 35 U.S.C. § 101, according to a Central District of California court. Oplus Techs. v. Sears Holding Corp., No. 12-cv-5707-MRP (C.D. Cal. March 4, 2013). Accordingly, the court denied the defendant’s motion for summary judgment of invalidity (which had been brought under 35 U.S.C. § 112, as well as under Section 101). Independent claim 7 of U.S. Patent No. 6,239,842, reproduced in full at the end of this post, was directed to a “method for de-interlacing an interlaced video format.” Independent claim 56 of U.S. Patent No. 7,271,840, was directed to a “method of determining entropy of a pixel of a real time streaming digital video image signal, for automatically correcting an error produced during real time editing of the real time streaming digital video image input signal.” The court began its Section 101 analysis with the ’842 patent, immediately turning to the Federal Circuit’s decision in Research Corp. Technologies v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010). The patents at issue in that case, held to recite patent-eligible subject matter, were directed to “digital image halftoning.” Explaining this holding, the present court explained “Mathematical algorithms are… Read More »Image Processing Claims Held Patent-Eligible

Yet Further Clarification on Indirect Divided and Joint Infringement

Under the doctrine of divided infringement, patent claims directed to a slot machine were properly found not to be directly infringed. Aristocrat Tech., Australia v. Int’l. Game Tech., No. 2010-1426 (Fed. Cir. March 13, 2013). However, for the second time in as many weeks, the Federal Circuit remanded a case to a District Court for further proceedings relating to indirect infringement based on the rules of divided and joint infringement articulated in Akamai Techs. Co. v. Limelight Networks, Inc., 692 F.3d 1301 (Fed. Cir. 2012) (en banc). The patents at issue, U.S. Patent Nos. 7,056,215 and 7,108,603 “relate to gaming machines, such as slot machines, and claim methods for awarding a progressive prize through a bonus game that may appear in addition to the main game.” Claims of both patents included steps that indisputably had to be initiated by a player, rather than the game machine. The District Court, conducting its analysis under BMC Res., Inc. v. Paymentech, L.P., 498 F.3d 1373 (Fed. Cir. 2007) and Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008), had entered summary judgment of non-infringement. The District Court found that there was no direct infringement because there was not a single infringing actor… Read More »Yet Further Clarification on Indirect Divided and Joint Infringement

Patent Defendant Allowed Discovery of Non-Accused Products

What is the permissible scope of discovery related to a defendants’ non-accused products in a patent case? In Positive Techs., Inc. v. Sony Elecs., Inc., No.: 11-cv-2226 SI (KAW) (N.D. Cal. Feb 26, 2013), the defendants were denied a protective order after the plaintiff sought discovery related to non-accused products; the plaintiff contended that the information sought was relevant to its damages analysis. The defendants’ E-Readers, the Kindle and the Nook, were accused of infringing patent claims related to a “controller drive scheme” for device displays. The plaintiff sought sales and revenue data for E-Reader content, services, and accessories, as well as information concerning the relationship between the E-Readers and these non-accused items. The defendants argued that the plaintiff would only be entitled to this discovery if it could establish that the entire market value rule applied, i.e., “that the patent-related feature of the E-Reader was the basis for customer demand.” However, the district judge had previously rejected this argument, and the present magistrate judge agreed. Information relating to non-accused products could be relevant to establishing a reasonable royalty rate and/or royalty base. Nonetheless, the court did think that the plaintiff’s pursuit of information relating to non-accused products was overly… Read More »Patent Defendant Allowed Discovery of Non-Accused Products

Further Clarification on Indirect Divided and Joint Infringement

Holding that a district court improperly applied the doctrine of joint patent infringement with respect to indirect infringement, while agreeing with the lower court’s reasoning concerning direct infringement, the Federal Circuit has vacated a summary judgment of non-infringement. Move, Inc. v. Re-Max Int’l., Inc., No. 2012-1342 (Fed. Cir. Mar. 4, 2013). Claim 1 of U.S. Patent 5,032,989 recites “[a] method using a computer for locating available real estate properties.” Steps of the claimed method include “selecting a first area having boundaries within the geographic area” and “selecting a second area having boundaries within the zoomed first area.” The district court held that Move, Inc.’s systems did not meet these claim limitations because users, and not Move, chose search boundaries. The district court reasoned that, on Move’s websites, “a user first selects an already bounded area either by entering a zip code or by clicking on the name of a city or neighborhood, a point on a map, or a zoom bar, but then the computer merely updates the display variables to reflect the user’s selected area.” Further, there was no joint infringement “because Move did not exert direction or control over users who may have performed the selecting steps.” After a prior appeal, the… Read More »Further Clarification on Indirect Divided and Joint Infringement

Patent Plaintiff Sanctioned Under Rule 11

The Northern District of Illinois has sanctioned a patent plaintiff that refused to withdraw a complaint of patent infringement, and did not perform an investigation, even after the defendant gave clear notice that its business method was different than the claimed business method. Smart Options, LLC v. Jump Rope, Inc., No. 12 C 2498 (N.D. Ill. Feb. 11, 2013). Smart Options, the plaintiff, alleged that Jump Rope, the defendant, infringed claims of United States Patent No. 7,313,539. The patent claims covered a website in which consumers could pay a “reservation price” for an “option” to purchase a good, service, or ticket. However, Jump Rope’s smart phone application embodied a system in which a consumer could, upon purchasing a “Jump,” obtain the right “to skip the line at an event or facility.” After Smart Options filed its complaint, Jump Rope sent it a Rule 11 letter stating that: Plaintiff alleges violation of a patent that covers providing options on the right to purchase goods or services at a future time. Defendant’s software application, however, does not provide options or charge option fees. Rather, it allows someone to buy the service provided — a right to “jump the line” at an event… Read More »Patent Plaintiff Sanctioned Under Rule 11

Federal Circuit Reaffirms Software Means-Plus-Function Requirements

In keeping with other cases discussed by this blog addressing whether software “means” recited in patent claims have been adequately disclosed, the Federal Circuit recently affirmed a district court’s invalidation of patent claims for indefiniteness because the patent specification did not disclose an algorithm to support the recited means. Function Media, L.L.C. v. Google Inc., No. 2012-1020 (Fed. Cir. Feb. 13,  2013). In this case, the Court explained that the claim at issue was indefinite because there is no specific algorithm disclosed in prose, as a mathematical formula, in flow charts, or otherwise. [The patent owner] cites to several places in the specification that it contends describe the software. These citations all explain that the software automatically transmits, but they contain no explanation of how the PGP software performs the transmission function. Further, “having failed to provide any disclosure of the structure for the “transmitting” function, [the patent owner] cannot rely on the knowledge of one skilled in the art to fill in the gaps.” The court also rejected the patent owner’s arguments under O2 Micro International v. Beyond Innovation Technology Co., 521 F.3d 1351 (Fed. Cir. 2008) that the jury was improperly allowed to construe the claims. Further, an… Read More »Federal Circuit Reaffirms Software Means-Plus-Function Requirements