Patent Experts

35 U.S.C. § 287(a) and the Burdens of Providing Notice for Pre-Suit Damages: Packet Intelligence LLC, v. Netscout Systems, Inc.

In Packet Intelligence LLC, v. Netscout Systems, Inc. the Federal Circuit reversed a jury determination for pre-suit damages, and vacated an enhancement of such damages, for Netscout’s infringement of U.S. Patent 6,665,725, U.S. Patent 6,839,751, and U.S. Patent 6,954,789, all owned by Packet Intelligence. The patents at issue were all directed to monitoring packets exchanged over a computer network. The ‘798 patent includes system claims, and the ‘725 and ‘751 patents include method claims. It was important in this case that infringement of the various system and method claims have different requirements to qualify for pre-suit damages. Pre-suit damages for the system claims are controlled by the marking requirements of 35 U.S.C. § 287(a), whereas pre-suit damages for the method claims are not. With respect to the method claims of the ‘725 and ‘751 patents, Packet Intelligence argued that evidence of direct infringement of the ‘725 and ‘751 patents was sufficient to merit an award of damages for pre-suit activities. Direct infringement would require the method of the patent claims to actually be practiced, i.e., the steps of method actually performed. However, NetScout’s primary activity was to sell and license software, and, as the Federal Circuit pointed out, method claims… Read More »35 U.S.C. § 287(a) and the Burdens of Providing Notice for Pre-Suit Damages: Packet Intelligence LLC, v. Netscout Systems, Inc.

Plain and Ordinary Meaning Requires More Than a Mere Capability

The Eastern District of Texas has granted-in-part Defendant HTC’s motion to strike expert testimony based on application of improper legal principles, to wit, the expert had improperly extended the plain and ordinary meaning of claims of U.S. Pat. No. 5,802,467 to encompass a mere capability to do the thing.  Salazar v. HTC Corp., Civil No. 2:16-cv-01096-JRG-RSP (E.D. Tex. May 2, 2018). Individual Salazar sued HTC for infringement of a system using a smartphone to perform two-way communication with appliances.  A representative system claim recites, inter alia: a microprocessor for generating a plurality of control signals used to operate said system, said microprocessor creating a plurality of reprogrammable communication protocols, for transmission to said external devices wherein each communication protocol includes a command code set that defines the signals that are employed to communicate with each one of said external devices; … (emphasis added). Plaintiff’s expert witness testified that the communication protocol could include a ‘command code set’ could satisfy the claim.  More specifically, “when asked whether a communication protocol that did not include a command code set would satisfy this claim limitation, [the expert witness] responded, ‘[I]t’s a question of whether [the system] is capable of including a command code… Read More »Plain and Ordinary Meaning Requires More Than a Mere Capability

Written Description Required to Claim Priority from a PCT

The Federal Circuit has clarified what written description is sufficient for a PCT application to qualify as a priority document for a U.S. Patent application. In Hologic, Inc. v. Smith & Nephew, Inc., No. 2017-1389 (Fed. Cir. Mar. 14, 2018) the Federal Circuit upheld a Patent Trial and Appeal Board (PTAB) decision finding that an earlier-filed PCT application (Publication No. WO 99/11184) provided sufficient written description to qualify as a priority document for U.S. Patent No. 8,061,359 under 35 U.S.C. §§ 112 and 120. The ‘359 patent is directed to an endoscope and is owned by Appellee Smith. The ‘359 patent issued from a divisional application of the national stage of the ‘184 PCT. The specification of ‘359 patent as originally filed and the ‘184 PCT application were nearly identical. The claims in the ‘359 patent recite a “light guide.” During prosecution of the ‘359 patent the Examiner objected to the drawings for failing to show the light guide. The specification was then amended during prosecution to state “[a] connection 8 for a light source is also present, for connection to a light guide, such as a fibre optics bundle which provides for lighting at the end of lens 13.”… Read More »Written Description Required to Claim Priority from a PCT

Contemporary Evidence Beats Google Obviousness Challenge

The Federal Circuit recently upheld two patents against an obviousness challenge by Google. (Google v. At Home Bondholders Liquidating Trust (Fed. Cir. 2018).) This case demonstrates the importance of contemporary evidence to support what a piece of prior art truly would have disclosed to a person of ordinary skill in the art. At Home Bondholders’ Liquidating Trust, as the name indicates, formed from the ashes of a practicing entity. As part of monetizing the leftover assets, At Home sued Google for infringing U.S. Patent Nos. 6,014,698 and 6,286,045. Google responded with two inter partes review petitions against each of the patents. The Patent Trial and Appeal Board focused on one limitation common to all the challenged claims, that an advertising request is nonblockable. When a user requests a webpage, the webpage and corresponding banner ads are cached at an intermediary server, and if the user requests the same webpage, the webpage and banner ads are delivered from the intermediary server. But the website may not get an accurate count of how many times the banner ad is loaded because it doesn’t see those multiple requests from the user. The patents solve that problem by specifying that a first request for… Read More »Contemporary Evidence Beats Google Obviousness Challenge

Expert Failing to Explain Source Code Analysis Is Precluded From Testifying

In a decision that will strike a chill into accused patent infringers everywhere, a defense expert has been precluded from testifying at trial about his analysis of source code that was purportedly central to the defendant’s non-infringement defense.  Fleming v. Escort Inc., No. 1:CV 09-105 (D. Id. May 23, 2012). The expert’s report identified lines of source code that allegedly differed from elements of asserted patent claims, but failed to explain how those lines of source code operated, much less how the source code differed from the patent claims.  Finding that the plaintiff, Fleming, would not have adequate opportunity to analyze the expert’s position, the court granted Fleming’s Daubert motion. The defendant, Escort, contended that its “devices lock out false signals by using a process different from that described in Fleming’s patents.”  However, the expert “never explained how the Escort products lock out false signals.”  Instead, the expert’s supplemental report incorporated interrogatory answers that simply “identified the lines of source code that perform the function of locking out false signals on Escort devices.”  Escort contended that identifying these lines of code was enough to explain how the source code performed the lock-out function. The court disagreed with Escort.  The expert… Read More »Expert Failing to Explain Source Code Analysis Is Precluded From Testifying