Microsoft Goes on the Offensive Against TomTom

Ben Romano from the Seattle Times reported today that Microsoft filed a patent infringement lawsuit in Seattle and the International Trade Commission against TomTom, the Amsterdam-based maker of portable GPS systems for in-car navigation, after more than a year of trying to reach a licensing arrangement. According to a company spokesperson, the patents cover "inventions that enable a vehicle computer system to run multiple applications, provide more natural driving directions, integrate other devices, and access the Internet." Microsoft's chief patent lawyer, Horacio Gutierrez, reportedly said in a statement: "We have an established intellectual property licensing program, and the patents involved in this case, relating to innovations in car navigation technology and other computing functionality, have been licensed by many others. In situations such as this, when a reasonable business agreement cannot be reached, we have no choice but to pursue legal action to protect our innovations and our partners who license them."

Apparently eight patents are involved, three pertaining to "technology that makes file management more efficient" and two covering "FAT Long File Name (LFN) patents that enable efficient naming, organizing, storing and accessing of file data." Other infringed patent reportedly allow file systems to work better with flash memory.

No patent numbers were immediately available. I'll post more information as it becomes available.

UPDATE: The patents involved are US 6,175,789; 7,054,745, 5,579,517, 5,758,352, and 6,256,642. A copy of the ITC action, filed by Sidley, is attached. tomtomitc.pdf

UPDATE: I also attach a copy of the USDC complaint, filed today in Seattle.tomtomComplaint.pdf

Implicit Networks Sued by Sun

It's been a bad month for local patent licensing company, Implicit Networks. Its case against Intel, Sun, Real, and AMD was stayed in view of reexamination, and now, it has been DJed (pronounced "dee-jay-ed," yes, it can be a verb, meaning "to sue for a declaratory judgment") by Sun.

Sun filed a complaint on January 15, 2009, asking for an order invalidating US Patent Nos. 6,324,685 and 6,976,248, and further asking for an order of noninfringement and unenforceability (apparently based on laches and equitable estoppel, not inequitable conduct). Both patents-in-suit relate to software methods for providing applets and enhanced security features for computer-servers. The complaint was filed in the USDC, Northern District of California by Fish and Richardson. The complaint contains some interesting allegations of personal jurisdiction over Implicit Networks (a small Seattle-based company with few contacts, if any, in California), and incorrectly refers to a related case involving these patents (filed against Adobe, IBM, Oracle, and SAP) as filed in the "Middle Western District of Washington." Implicit's WDWA case against IBM, Oracle, Adobe, and SAP involves Infringement allegations targeting IBM's Websphere Application Server, Oracle's Application Server and BEA WebLogic Server, SAP's NetWeaver and Adobe's JRun and ColdFusion products.


Implicit%20Networks%20DJ%20Complaint%20by%20Sun.pdf

Simulab Survives Summary Judgment (Barely) In Surgical Trainer Patent Case

Following up on my recent post about this case involving a patent owned by Simulab Corp. for a surgical trainer (U.S. Patent No. 6,780,016 "Human Surgical Trainer and Methods for Training"), Judge Zilly granted in-part and denied in-part Defendant's motion for summary judgment. In denying part of the motion, Judge Zilly asked for a proffer from Simulab to see if there was a need to go to trial.

Infringement claims based on claim 43 are the only claims that survived summary judgment for now, but these claims face an uncertain future as explained in the Court's order

From Judge Zilly's order:

"Because the Court, however, remains skeptical that Simulab can demonstrate the requisite layer properties and relationships, the Court DIRECTS Simulab to submit an offer of proof within twenty (20) days of the date of this Order. If such offer of proof fails to include admissible evidence that the adhesive layers of Sites 4 and 5 and the film layer of Site 7 are denser and more difficult to dissect than the relevant simulated skin layer, as those relationships have been defined in this Order, the Court will grant partial or full summary judgment in favor of Synbone as to Claim 43."

Simulab%20Order%20on%20MSJ.pdf

Implicit Networks Case Stayed Pending Reexamination

Local patent licensing company, Implicit Networks, was dealt a blow recently in its bid to enforce patent rights against Intel, AMD, Real Networks, and Sun. Implicit Sued back in February 2008 on U.S. Patent No. 6,629,163, a patent covering various encryption methods using demultiplexing technology for data processing. Implicit Networks alleges Intel uses this patented technology in its Viiv-based products, AMD and Raza allegedly use it in ATI and Alechemy products, Nvidia in its Stant Media software, Sun in its Java Media Framework, and Real in its Helix DNA client.

The party defendants filed a request for ex-parte reexam in December 2008, nearly 10 months after the complaint was filed. Shortly thereafter, they moved to stay the case. On Monday, Judge Robart granted the motion, relying in large part Implicit's delay in prosecuting the case, its grant of multiple extensions of time, its failure to conduct early discovery, its failure to seek even a single deposition after almost a year of pendency of the lawsuit. Further, its status as a "patent licensing company" weighed heavily against its claims of prejudice in view of the requested stay.

This result underscores the need for patent plaintiffs to have a clear plan for enforcement going into litigation and to diligently execute that plan from the first day the complaint is filed. The result here might have been different had Implicit proceeded diligently with discovery. After all, it had ten months before the party defendants even sought reexamination. A lot could have been accomplished in the last 12 months since the case was filed in order to buttress arguments that delay in view of reexamination will cause prejudice.

From Judge Robart's order:

"Finally, Implicit argues that “stays continue to prejudice the non-movant even after the stay has been lifted, particularly in the aspects of litigation that require expediency.” (Resp. at 6.) Here, Implicit has not moved with great expediency. Twelve months have passed since the initial filing, yet only recently has Implicit served interrogatories and requests for production. (See Knox Decl. ¶ 2.) This lack of urgency weighs in favor of granting a stay."

Implicit%20Networks%20Order%20Granting%20Stay.pdf

K2 Wins Summary Judgment in Wide Short Ski Case

Some of you may remember an earlier post of mine about this case. Individual inventor, Paul Nelson, sued K2 on claims involving U.S. Patent No. 5,603,522 covering a "Wide Short Ski." The specification was drawn to a shaped ski having a range of dimensions in length, side-cut radius, shovel width, and tail width. The claims at issue (added in a CIP) were for much narrower ranges than what was disclosed in the parent application's specification. K2 moved for partial summary judgment, arguing that these claims (the ones added in a CIP) were not supported by the parent application, an argument setting up a motion for summary judgment of invalidity under 35 USC Section 102, because the claims at issue were not entitled to priority filing for failure to satisfy the written description requirement.

Well, inventor Nelson did not go quietly after losing partial summary judgment on the written description issue, claiming that any sales made before his newly adjusted critical date were "experimental." After hearing oral argument on Monday, Judge Lasnik issued an order rejecting contentions of experimentation and directing the clerk to enter judgment in favor of K2.

From Judge Lasnik's order:

Plaintiff and his wife assert, without even attempting to address each sale individually, that all of the transactions during this period were part of a "testing and evaluation" program. Decl. of Paul Nelson at ¶ 5; Decl. of Coni Nelson at ¶ 4. The contemporaneous evidence does not support these statements, and "the expression by an inventor of his subjective intent to experiment, particularly after institution of litigation, is generally of minimal value." Lough, 86 F.3d at 1122. A series of newspaper articles written between December 1992 and February 1993 shows that plaintiff was actively marketing the MAX F/X for consumer use during the 1992-93 ski season.[footnote omitted] According to the articles, plaintiff received orders from eight Western Washington stores, was taking orders from individual skiers, and was working toward manufacturing twenty pairs of skis per week. In the December 30, 1992, article, readers were invited to order their own pair of MAX F/X skis by calling the phone number provided. There is no indication that plaintiff was seeking "testers" for the skis or was conducting experiments before making his invention available to the public. Rather, his statements to the reporters and the existence of the articles themselves show a concerted effort to bring the invention to market immediately. Ms. Nelson’s sales notes support this conclusion. They show that plaintiff was trying to convince a number of ski shops around the country to carry the MAX F/X. If an outright sale was not in the offing, plaintiff would agree to a consignment, demonstration, or loan of some sort to give people a chance to try the wide short ski. None of the notes suggests that plaintiff intended to retain control of the skis after sale or that the shops or end-users would be required to do any tests or experiments with the skis.

Sales of the "no strings attached" variety are almost never "experimental." I've written about these types of sales and how they can turn into ruinous events for companies trying to raise capital to fund ongoing product development. If you are interested, follow this link to my article first published in IP Law and Business last year titled "Holding Back the Clock: Confusion about the On-Sale bar Continues to Cost Companies the Right to Patent their Inventions."

Seattle Patent Litigation Update January 2009

The Western District saw just one patent case filed last month, Chen v. Unisen, Inc. (2:2009cv00128, assigned to Judge Lasnik). Unisen does business under the name Star Trac. According to the Star Trac web site, Star Trac is "proud to be an international leader in commercial quality fitness equipment. But [it is] far from satisfied." The patent at issue is U.S. 6,745,873 covering a braking device for an exercise cycle.

One patent case file in January 2009 is in stark contrast to the 10 cases that were filed in Washington Federal Courts in January 2008.

In other Seattle patent litigation news, Microsoft settled a dispute over encryption technologies with Maz Technologies. MAZ lodged the suit in the U.S. District Court for the Eastern District of Texas in July, alleging that the Redmond, Wash.-based software giant’s Encrypting File System software, which is part of Microsoft’s Windows operating system products, infringed two patents, U.S. Patent Number 7,096,358, (an encrypting file system issued in August 2006) and U.S. Patent Number 6,185,681 (a method of transparent encryption and decryption for an electronic document management system). The ’681 patent was issued in February 2001, and the U.S. Patent and Trademark Office issued a re-examination certificate for it in May 2006.

In other news, Nintendo moved quickly last month on the heels of the Federal Circuit's grant of mandamus in the In re TS Tech case, a case finding that the district court in Marshall, Texas abused its discretion in refusing to transfer a case under 28 U.S.C. 1404. On January 26, Nintendo filed a motion seeking to transfer a case brought by Motiva LLC, an entity described by Nintendo in its motion as "a vehicle created for the purpose of this litigation, as it was incorporated less than a year after the patent at issue in this action, U.S. Patent No. 7,292,151 (“the ‛151 patent”) issued and shortly before this case was commenced." Nintendo is seeking to have the case transferred to Seattle.

Finally, Microsoft is set to begin trial shortly in East Texas in a patent case brought by online chat company Paltalk Holdings Inc. alleging that the technology giant's Xbox Live online gaming service infringes two Paltalk patents. On Monday, Judge David Folsom of the U.S. District Court for the Eastern District of Texas denied Microsoft's motion for partial summary judgment after finding that the company had not met its burden of showing that the two patents were anticipated by clear and convincing evidence. Paltalk Holdings is being represented by Seattle's Brooke Taylor, a partner in the Seattle office of Susman Godfrey. The patents-in-suit are U.S. Patent Numbers 5,822,523 and 6,266,686.