February 2014

Common Meaning Given to Claim Language Using Terms of Art

A question of infringement turned on the meaning of “gateway” in the phrase “intelligent gateway” in a patent claim.  The Federal Circuit agreed that a district court was entitled to consult technical dictionaries and use commonly understood meanings of the word to construe the claim.  Accordingly, the court affirmed the district court’s claim construction, and thus affirmed a summary judgment of non-infringement stipulated to based on the claim construction.  Starhome GmbH v. AT&T Mobility, LLC, No. 2012-1694 (Fed. Cir. Feb 24, 2014).  The opinion was authored by Judge Schall, joined by Judges Reyna and Moore. The asserted patent claims of U.S. Patent No. 6,920,487 recited a “system” that included an “intelligent gateway,” and, simply, “an intelligent gateway.”  The patent owner argued that “intelligent gateway” meant “a network element that uses knowledge implemented in databases or the like and application logic to perform its operations.”  According to the patent owner, the specification simply required the gateway to use a local database, and not to access other networks.  The patent owner further contended that the specification disclosed embodiments with “a single intelligent gateway associated with a single mobile network.”  The patent owner also argued that claim differentiation supported its construction, because two… Read More »Common Meaning Given to Claim Language Using Terms of Art

Patent-Eligibility Ruling on Data Encryption Claims

In an opinion authored by Federal Circuit Senior Judge Bryson, an Eastern District of Texas court has denied a motion for summary judgment that patent claims directed to a method for transmitting encrypted data are ineligible for patent protection under 35 U.S.C. § 101.  TQP Development, LLC. v. Intuit, Inc., N0. 2:12-CV-180-WCB (E.D. Texas Feb. 19, 2014). The claims of United States Patent No. 5,412,730 recited “[a] method for transmitting data comprising a sequence of blocks in encrypted form over a communication link from a transmitter to a receiver.”  The defendants argued that the claims were “directed to patent-ineligible subject matter—specifically, an algorithm, a mental process, or an abstract idea,” and “would have an intolerably broad preemptive effect.” Judge Bryson began with a review of applicable Section 101 precedent, naming the usual suspects:  Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012); Bilski v. Kappos, 130 S. Ct. 3218 (2010); Diamond v. Diehr, 450 U.S. 175 (1981); Parker v. Flook, 437 U.S. 584 (1978); Gottschalk v. Benson, 409 U.S. 63 (1972); and, last but not least, CLS Bank International v. Alice Corp., 717 F.3d 1269 (Fed. Cir.) (en banc), cert. granted, 134 S. Ct. 734 (2013).  Judge… Read More »Patent-Eligibility Ruling on Data Encryption Claims

Third Party Affirmative Defenses to Software Copyright Infringement

A license, either express or implied, may be an affirmative defense to software copyright infringement.  However, a recent case, brought by Oracle against a vendor who had provided services to Oracle’s customer, illustrates the limits of these defenses.  Oracle USA, Inc. v. Rimini Street, Inc., No. 2:10-CV-00106-LRH-PAL (D. Nev. Feb 13, 2014).  Perhaps more importantly, this case illustrates practices – generally governed by fairly standard provisions in a software license – concerning which both the software licensee and its third-party vendors should take care. Following a motion by Oracle, the court granted summary judgment denying a number of the affirmative defenses raised by the defendant, albeit reserving judgment on a few.  The defendant, Rimini, conceded that it had copied Oracle’s software.  However, with respect to four different Oracle customers, Rimini argued that it had express and implied licenses to use the software.  (Rimini also raised an affirmative defense of “consent,” which the court explained was the same as an implied license.) Express License Defenses Turning to the first Oracle customer at issue, the City of Flint, the court first rejected Oracle’s argument that Rimini could not “assert the City of Flint’s software licensing agreement as a defense” at all “because… Read More »Third Party Affirmative Defenses to Software Copyright Infringement

Reasonable Steps Protect Software Trade Secrets

A software owner must take steps to preserve trade secrets in software, but those steps need only be reasonable, rather than including every conceivable action.  That is the lesson from PQ Labs, Inc. v. Qi, No. 12-0450 CW (N.D. Cal., Jan 29, 2014), denying the defendants summary judgment on the plaintiff’s claim brought under the California Uniform Trade Secrets Act (CUTSA), Cal. Civ. Code §§ 3426 – 3426.11. Under CUTSA, “a plaintiff must show that (1) it owned a trade secret; (2) the defendant acquired, disclosed, or used that trade secret through improper means, and (3) the defendant’s actions damaged the plaintiff.”  Here, the court rejected the defense that the plaintiff allegedly had “failed to present sufficient evidence to support an inference that it took reasonable steps to maintain the secrecy of its alleged trade secrets.” The plaintiff’s CEO had averred that one of the defendants had been explicitly told about the plaintiff’s trade secrets.  That defendant had signed a nondisclosure agreement acknowledging the confidentiality of the plaintiff’s software and source and object code.  Another of the defendants had likewise been warned to keep the plaintiff’s technical information secret. Further, the plaintiff had given similar warnings regarding its trade secrets… Read More »Reasonable Steps Protect Software Trade Secrets