Patent Infringement

Case Dismissed Because Lack of Direct Infringement of Patent Claims Requiring a Mobile Device: Garrett v. TP-Link Research

A district court recently dismissed a complaint for failing to properly allege direct infringement with the mobile device recited in the patent claims. Garrett v. TP-Link Research America (N.D. Cal.). An app for installation on a mobile device does not count as a mobile device or as using a mobile device for showing direct infringement, and when pleading indirect infringement, direct infringement by an end user must be alleged. Garrett’s complaint against TP-Link failed on these scores, so the court granted TP-Link’s motion to dismiss the complaint, without prejudice. Garrett, an individual, sued TP-Link over its line of a security cameras for infringement of U.S. Patent Nos. 9,854,207 and 10,511,809. All the claims of the patents require a “mobile device” and a “camera,” and some of the claims further require a “server.” The court used claim 19 of the ’207 patent and claim 10 of the ’809 patent as representative: 19. A mobile surveillance system, comprising: a mobile device configured to communicate with at least one camera positioned at a surveillance area, wherein the at least one camera captures surveillance data of the surveillance area; and the mobile device is configured to control activation of the mobile surveillance system, and… Read More »Case Dismissed Because Lack of Direct Infringement of Patent Claims Requiring a Mobile Device: Garrett v. TP-Link Research

How to (Not) Prove Infringement of a Means-Plus-Function Patent Claim: SPEX Technologies, Inc. v. Apricorn

A patent plaintiff saw its jury trial victory vacated when the court granted a defense motion for judgment as a matter of law under FRCP 50(b), finding that the plaintiff had not proved that the accused products had structure corresponding to claimed means.  SPEX Technologies, Inc. v. Apricorn, No. CV 16-07349 JVS (AGRx) (C.D. Cal. Aug. 10, 2020). The jury found infringement of claims 11 and 12 of U.S. Patent No. 6,088,802. Those claims recite: 11. A peripheral device, comprising: security means for enabling one or more security operations to be performed on data; target means for enabling a defined interaction with a host computing device; means for enabling communication between the security means and the target means; means for enabling communication with a host computing device; and means for mediating communication of data between the host computing device and the target means so that the communicated data must first pass through the security means. 12. A peripheral device as in claim 11, wherein the target means comprises means for non-volatilely storing data. During claim construction, the court had found that an “interface control device 910” disclosed in the ’802 patent specification was the structure corresponding to the recited “means… Read More »How to (Not) Prove Infringement of a Means-Plus-Function Patent Claim: SPEX Technologies, Inc. v. Apricorn

Providing Software for User Device Insufficient to Adequately Plead Infringement of Method Claim

The Northern District of California dismissed a complaint of patent infringement for failing to adequately plead direct or joint infringement. Sentius Int’l LLC v. Apple Inc., No. 4:20-cv-00477 (N.D. Cal. June 2, 2020). The Court held that merely selling software did not constitute direct infringement and that Sentius did not adequately allege the requisite direction or control required for joint infringement. Plaintiff Sentius alleged infringement of U.S. Patent Nos. RE43633 and 7,672,985 by Defendant Apple. Defendant filed a motion to dismiss under Rule 12(b)(6), alleging that Plaintiff failed to sufficiently plead direct and joint infringement of the asserted patents. Claim 62 of the ‘633 patent is too long to recite in full, but the relevant part to consider is “a computer-implemented method for linking textual source material to external reference materials for display….” Of note is that a “computer-implemented method” has specific requirements for direct and joint infringement, as the Court discussed in the decision. Direct infringement of a method claim, as elucidated in the several Akamai decisions, requires all steps of the claimed method to be performed by or attributable to a single entity. Sale of a product that performs the method, such as software, is not direct infringement… Read More »Providing Software for User Device Insufficient to Adequately Plead Infringement of Method Claim

Federal Circuit Uses Claim Construction to Overturn Lack of Enablement: McRO v. Bandai Namco

In its second time considering a patent, the Federal Circuit upheld the district court’s ruling on noninfringement but overturned its ruling of lack of enablement in McRO v. Bandai Namco. The decision rested on the claim construction of one term, “vector.” That construction excluded the accused products from the scope of the patent, but it likewise excluded examples that the defendants had offered of embodiments that were not enabled by the patent. McRO owns the sole patent at issue, U.S. Patent No. 6,611,278, which covers a “method for automatically animating lip synchronization and facial expression of animated characters.” The patent describes automating the modeling of an animated character’s mouth according the phoneme being spoken by the character. A phoneme is the smallest unit of spoken speech, i.e., a single sound. For each phoneme, a “morph target” is applied to a model of the neutral position of the character’s mouth. Each morph target is a set of “deltas,” each of which is a vector representing the change in position of a vertex of the mouth model from the neutral position to a phoneme-specific position. Each delta can be scaled by a “morph weight” between 0 and 1. Here is a representative… Read More »Federal Circuit Uses Claim Construction to Overturn Lack of Enablement: McRO v. Bandai Namco

The Doctrine of Equivalents Fails to Save Patent Infringement Suit: Ethicon Endo-Surgery, Inc., et al, v. Covidien LP

Following a bench trial, the District Court of Massachusetts held that Ethicon’s “shepherd’s hook” design for finger actuation of a forceps is not equivalent to a “finger loop” claimed by Covidien’s patent no. 9,241,759, and thus Covidien had failed to establish infringement for Ethicon’s Enseal X1 Large Jaw vessel sealer. Ethicon Endo-Surgery, Inc. v. Covidien LP, No. 16-12556-LTS (D. Mass., April 24, 2020.) The court provided an interesting analysis under the Doctrine of Equivalents. Background Ethicon sued Covidien for a declaration that Ethicon’s Enseal X1 Large Jaw vessel sealer does not infringe Covidien patent nos. 9,241,759 and 8,323,310. Covidien counterclaimed for infringement. This article focuses on Covidien’s assertion that Ethicon’s “shepherd’s hook” design for actuating the Enseal X1 device infringes on Covidien’s claimed “finger loop,” based on the Doctrine of Equivalents. Claim 1 of the ‘759 patent is representative and recites in relevant part: 1. An endoscopic bipolar forceps, comprising:                . . .                a movable handle of unitary construction having a finger loop positioned towards a first end thereof, a drive flange positioned towards a second end thereof, and a locking flange disposed between the finger loop and the drive flange, the driver flange operably coupled to the… Read More »The Doctrine of Equivalents Fails to Save Patent Infringement Suit: Ethicon Endo-Surgery, Inc., et al, v. Covidien LP

Insufficient Written Description in Provisional Application Triggers On-Sale Bar of Subsequent Patent

A provisional patent application must include sufficient description to allow a person having ordinary skill in the art to make an invention as claimed in an asserted patent claiming priority to the provisional application, as recently upheld in Speedfit LLC et al v. Woodway USA, Inc. et al, No. 2-13-cv-01276 (E.D.N.Y. Jan. 9, 2020). Plaintiff Speedfit, LLC owns U.S. Patent Nos. 8,308,619 and 8,343,016, directed to a leg-powered treadmill. Speedfit, LLC and Aurel Astilean sued Defendant Woodway USA, Inc. for infringement of these patents. Defendant filed a motion motion for summary judgment of invalidity of the ‘619 and ’016 patents, asserting that Plaintiffs violated the on-sale bar of pre-AIA 35 U.S.C. § 102. The asserted patents have a critical date of October 29, 2009, one year before the filing date of the ‘619 patent. Plaintiffs filed Provisional Patent Application No. 61/280,265 on Nov. 2, 2009, and the asserted patents claim priority to the ‘265 provisional. Plaintiffs conceded that they offered a leg-powered treadmill for sale at a trade show in March 2009, six months before the critical date. Plaintiffs argued that the asserted patents were entitled to the priority date of the ‘265 provisional, filed within a year of the… Read More »Insufficient Written Description in Provisional Application Triggers On-Sale Bar of Subsequent Patent

Federal Circuit Upholds Noninfringement Because of Claim Construction of “Extruded Parison”: Plastic Omnium v. Donghee America

The Federal Circuit recently upheld a summary judgment of noninfringement based on an undisputed claim construction in Plastic Omnium v. Donghee America. The dispute centered on manufacturing plastic fuel tanks by blow molding. Plastic Omnium is a French automotive supplier specializing in plastics. Donghee America is also an automotive supplier that makes plastic parts for Hyundai and Kia. Plastic Omnium accused Donghee’s manufacturing process of infringing its patents, U.S. Patent Nos. 6,814,921 and 6,866,812. Donghee’s manufacturing process begins by forcing plastic into a coextrusion head, which extrudes molten plastic with a circular cross-section. Donghee’s product literature labels the plastic at this point a “parison.” The coextrusion head is directly connected to a “flat die” into which the “parison” feeds. Inside the flat die, the plastic is cut and flattened, and the plastic exits the flat die as two flat sheets. Here is a representative claim that Plastic Omnium accused this process of infringing: 1. A process for manufacturing plastic hollow bodies from two shells formed by molding, which are joined together, at least one shell being produced by compression-molding a portion of a plastic sheet between a mold and a punch and by the remaining portion of the sheet being… Read More »Federal Circuit Upholds Noninfringement Because of Claim Construction of “Extruded Parison”: Plastic Omnium v. Donghee America

Absolute or Equitable Intervening Rights, It Matters

Delaware District Court grants-in-part and denies-in-part patentee’s motion for summary judgment regarding accused infringer’s defense of intervening rights.  Sonos, Inc. v. D&M Holdings, Inc.,No. 14-1330-WCB (D. Del. Nov 7, 2017). The owner of a patent that survives reexamination “is only entitled to infringement damages for the time period between the date of issuance of the original claims and the date of the reexamined claims if the original and the reexamined claims are substantially identical.” Convolve, Inc. v. Compaq Comput. Corp.,812 F.3d 1313, 1322-23 (Fed. Cir. 2016). This case pertains to an issue of law not squarely addressed by the Federal Circuit—i.e., whether 35 U.S.C. § 252, second paragraph, first sentence extends to process claims (or only to product claims).  First, a little background… The first sentence of 35 U.S.C. § 252, second paragraph commonly is referred to as a defense of absolute intervening rights. This defense allows a party whose products infringe a reissued or reexamined patent to continue to use or sell specific products that were made, purchased, or used before the reissuance or reexamination, if the asserted claim was not in the original patent, so long as the accused infringer began its infringing activity before the patent was reissued or… Read More »Absolute or Equitable Intervening Rights, It Matters

Plain and Ordinary Claim Construction

In Wisconsin Alumni Research Foundation v. Apple, No. 2017-2265 (Fed. Cir. Sept. 20, 2018), the Federal Circuit construed a pair of claim terms under their plain and ordinary meaning in reversing summary judgment that Apple was not entitled to a pre-trial finding of non-infringement of U.S. Patent 5,781,752, while affirming a summary judgment that the ‘752 patent was not anticipated. The ’752 patent is owned by the Wisconsin Alumni Research Foundation (WARF) and is directed to the storage, retrieval, and processing of data by a processor. In particular, the claims of the ‘752 patent provide an improvement to processing technology by enabling the processor to execute program steps in an order that is different that their program order. Steps may be performed out of order when the results of one step are not necessary for another step. The claimed invention includes a “predictor” that makes predictions for a “particular” load instruction based on a mis-speculation instruction. The predictor uses a table that associates a load tag with a load instruction. The predictor updates the prediction as the program is run. At the district court, neither WARF nor Apple sought construction of the term “particular.” However, WARF unsuccessfully moved before trial to… Read More »Plain and Ordinary Claim Construction

Another Unsupported Patent Royalty Rejected

Expert testimony on patent royalties that is unsupported by evidence is excluded. Dominion Assets LLC v. Masimo Corp., Case No. 14-cv-03002 (N.D. Cal. Aug. 1, 2018). Plaintiff Dominion alleged infringement by Defendant Masimo of U.S. Patent Nos. 5,379,764 and 5,460,177, which are directed to radiation measurement techniques for blood concentration. Dominion presented expert testimony on a reasonable royalty. Masimo filed a motion to exclude the expert’s testimony as (1) failing to rely on a license agreement that is economically comparable to the patented invention, (2) failing to apportion damages to the allegedly infringing features, and (3) failing to tie the royalty rate to the facts of the case. The Court agreed with Masimo, excluding Dominion’s expert testimony on damages. On the license agreements, the expert relied on settlement agreements between Masimo and a third party. The agreements involved Masimo’s revolutionary technology. Dominion purchased the asserted patents out of bankruptcy cheaply and had not developed any products. The Court noted the expert’s fundamental economic flaw: comparing the highly-valued Masimo technology to the low-valued patents. Further, the Court noted that the expert’s opinion was unreliable because the agreements covered a portfolio of patents, and not the single claim asserted by Dominion. Finally, the… Read More »Another Unsupported Patent Royalty Rejected