Seattle Patent Litigation Update October 2010

So I'm back to blogging after a six month hiatus. Several factors contributed to this languorous pause, including (in no particular order and definitely not exhaustive), the break-up of Darby & Darby PC after 115 years in business (for more on this read here), the starting of a new West coast office of Frommer Lawrence & Haug (reminder that this blog is a personal blog and it does not reflect the opinion or position of FLH or any of its partners or clients), Google's decision to discontinue FTP publishing on Blogger, a jury trial, and a host of other things one might call "excuses". The good news is that Seattle Patent Litigation was not waiting for me, it kept trucking along, and in August, Paul Allen decided to dust off several patents claiming credit for inventing the internet (sorry Al Gore). What follows is a list of cases since the beginning of March of this year. Patent infringement filings in Washington are on pace to almost double this year compared to last year's total.

October 8, 2010

RW Distributing, Inc et al v. Waterfall Pond Supply of Washington, Inc et al

October 7, 2010

Brookens v. Barrick Gold Corp

October 4, 2010

Modumetal Inc v. Integran Technologies, Inc.

October 1, 2010

Microsoft Corporation v. Motorola Inc.

September 27, 2010

Sunshine Kids Juvenile Products, LLC v. Indiana Mills & Manufacturing, Inc.

September 17, 2010

Columbia Machine Inc v. Besser Company

August 27, 2010

Interval Licensing LLC v. eBay, Inc. et al

August 13, 2010

Broadband Graphics LLC v. FXCM Holdings LLC et al

August 5, 2010

Stern et al v. Sequal Technologies, Inc..

August 4, 2010

ArrivalStar SA et al v. Agility Logistics, Inc. et al

August 2, 2010

Moricz v. Google Inc

July 20, 2010

Kai U.S.A., Ltd. v. Keeton et al

July 19, 2010

Krausz Industries, Ltd. v. Romac Industries, Inc.

June 28, 2010

Broadband Graphics LLC v. Laszlo Systems, Inc.

June 24, 2010

Washington Research Foundation v. Silicon Laboratories Inc

HTC America, Inc. et al v. ADC Technology, Inc.

HTC America, Inc. et al v. ADC Technology, Inc.

June 11, 2010

ELECTRIC MIRROR, LLC v. Janmar Lighting, Inc.

June 10, 2010

Berg Manufacturing Inc v. AAR Manufacturing Inc

June 4, 2010

Jovanovich et al v. Redden Marine Supply, Inc.

June 4, 2010

Jovanovich et al v. Seattle Marine & Fishing Supply CO

June 3, 2010

Cequint, Inc. v. ABC Company et al

May 24, 2010

Mobile Merchandisers, Inc. v. Rack's, Inc.

May 18, 2010

Microsoft Corporation v. Salesforce.com, Inc.

Radio Systems Corporation et al v. Lalor et al.

May 4, 2010

F5 Networks Inc.v Imperva

April 30, 2010

Uroplasty Inc. v. Moses et al

April 19, 2010

Laughing Rabbit, Inc. v. Allstar Marketing Group LLC

April 16, 2010

F5 Networks Inc v. A10 Networks, Inc.

April 14, 2010

Broadband Graphics LLC v. Capital Market Services LLC

April 6, 2010

Kinesis Corporation v. SafeType, Inc.

April 1, 2010

Microsoft Corporation v. Datel Design and Development Ltd. et al

March 19, 2010

Wise v. Techtronic Industries Co. Ltd.

March 12, 2010

Ho Sports Company, Inc. v. Nash Manufacturing, Inc. et al

March 10, 2010

Wang v. ProductWorks, LLC

March 4, 2010

Technogym SpA v. Sports Art America Inc.

March 2, 2010

Motiva LLC v. Nintendo Co Ltd et al

Judge Jones Construes Claims in Toyota Hybrid Case

In a case that features Hollywood's David-versus-Goliath story of inventorship (for example see this link), independent inventor Conrad Gardner is suing Toyota for patent infringement of his U.S. Patent No. 7,290,627. The ‘627 Patent covers hybrid vehicle technology for automobiles. Specifically, the patent relates to the use of an internal combustion engine and a separate electric motor for powering a hybrid vehicle. While Mr. Gardner's patent has a priority date earlier than Toyota's first patent in this area, he has had difficulties in this case. The latest came in terms of claim construction, while it is not clear of the implications.

Claim one of the '627 patent is copied below:

1. A controller of a hybrid electric vehicle having an engine (22)
and a motor (12) for controlling driving of the engine (22) and the motor
12, comprising: a battery (58) for supplying electric power to the motor (12); motor-generated driving force transfer means (14) for transferring the driving force generated by the motor (12) to wheels (18); a power generator (78) driven by the engine (22) to supply generated electric power to the battery (58); engine-generated driving force transfer means (75) for transferring the driving force generated by the engine (22) to the wheels (28); means for detecting a vehicle running state (44); and control means (30) for controlling whether to transfer a driving force generated by an engine (22) to a power generator (78) or wheels (28)in accordance with a vehicle running state, wherein the control means (30) transfers the driving force generated by the engine (22) to wheels (28) when said running state is more than a predetermined value, transfers the driving force generated by the engine (22) to the power generator (78) when said running state is less than a predetermined value.

Judge Jones recently construed this claim and others. In particular, there was a lot to say about whether certain terms should be construed as means-plus-funtion under Section 112 paragraph 6.

From Judge Jones' order:


Mr. Gardner’s proposed construction is confusing, because he both contends that this claim does not have a means-plus-function limitation and also directs the court to the drawings as evidence to support the “well-understood meaning.” Again, Mr. Gardner has unsuccessfully attempted to rebut the means-plus-function presumption. In order to rebut the presumption, the claim language itself would have to define the structure that performs the stated function. Mr. Gardner has not pointed to any language in the claim itself that describes definite structure, and indeed relies on the drawings in order to construct the term. Thus, the court concludes that this is a means plus-function limitation because no specific structure is identified.

Fed Cir. Reverses WDWA on Rare Interference Ruling

I previously posted about this case here, when Judge Pechman dismissed a suit brought by Philips Electronics seeking to overturn a ruling made in an interference. The Board of Patent Appeals and Interferences had ruled an inventor at Philips Electronics, Morgan, was not the first to invent certain defibrillator methods claimed in US Patent No. 6,241,751. The invention claimed in the '751 patent involved considering patient impedance levels and adjusting the pulse of the defibrillator in response to those impedance levels. According to the Board, an inventor at Cardiac Science, Owen, was the first to invent defibrillators with this capability. Philips asked the USDC here in Seattle to review the Board's decision under 35 USC section 146, and Judge Pechman affirmed the Board on all issues. Most notably, Judge Pechman decided that the Board was not required to construe the terms "impedance-compensated defibrillation pulse," because no matter how those terms were construed, the specific interpretation would not have impacted the Board's ultimate decision.

Yesterday, the CAFC reversed in an opinion authored by Judge Garjarsa (with him were Chief Judge Michel and Friedman, J.) stating that the lower court's ruling was "tantamount to sua sponte summary judgment." Slip Op. at 6. In its opinion, the CAFC explained "[t]hough the court suggested during the last hearing that it need not consider the merits of the interference if it agreed with the Board’s procedural grounds, § 146 grants parties the right to present new testimony and requires the court to review the Board’s factual findings. See Winner, 202 F.3d at 1345; Estee Lauder Inc. v. L’Oreal, S.A., 129 F.3d 588, 592 (Fed. Cir. 1997) (“Section 146 actions have been described as a hybrid of an appeal and a trial de novo.”)."

The CAFC also noted that "there remains a genuine dispute as to material facts between the parties. For example, the parties still disagree on whether the Owen application contains an adequate written description for the term “impedance-compensated defibrillation pulse” and on whether the Gliner patent anticipates Owen’s claim 38. Cardiac Science argues that Philips failed to inform the district court that it would need to address other issues after ruling on the motion for a claim construction hearing. But Cardiac Science ignores clear statements to the contrary."

Data Retrieval Patent Case Transferred

As a counterpoint to my previous post, regarding an order denying a defendant's motion to transfer patent litigation out of the WD of Wash., this post features the opposite result, a defendant winning a transfer to the N.D. of California. The case is Data Retrieval Tech v. SybaseC08-1702-RSM.

There are key differences that made this case susceptible to transfer. Judge Martinez explained in his order that most of the witnesses were located in California, most of the documents and activities occurred there, and the parties are located there.

Plaintiff's primary argument for keeping the litigation in Seattle was the fact that the inventors were located here and that the patents had been previously litigated in this district. Judge Martinez disposed of these arguments as follows:

"DRT maintains that the inventors of the patents at-issue all reside in this district. But as Defendants indicate, the exclusive license agreement between Timeline and APAC indicates that these former employees of Timeline are obligated to fully cooperate in any litigation to enforce the patent rights. (Dkt. #21, Decl. of Bovich, Ex. E, § 5.4). The license agreement also reveals that the Timeline employees will be represented by counsel at no additional charge, compensated for any substantial time spent on the case, and reimbursed for out-of-pocket travel expenses. (Dkt. #35, Supp. Decl. of Bovich, Ex. A, § 2.4). Consequently, the inventors will not be substantially inconvenienced in the event they have to travel to the Northern District of California to participate in this case.

***

The Court also finds no merit in DRT’s contention that previous cases filed in this district court involving the patents at-issue precludes transfer. These cases involved different parties, were assigned to different judges in this district court, and are all currently closed. See Timeline Inc. v. ProClarity Corp., C05-1013 JLR; Timeline Inc. v. Hyperion Solutions, C01-0977 MJP; Timeline Inc. v Oracle Corp., C00-1140 JCC; Timeline Inc. v. Broadbase Software, C99-1172 RSL; Timeline Inc. v. Sagent Tech. Inc., C99-414 JCC. Thus, efficiencywill not be served by retaining the case before the undersigned judge."

Another interesting aspect to this case is that it validates a strategy of filing a DJ counterclaim for invalidity in a "target venue" as opposed to filing them in the lead, "plaintiff's case."

From the order:

"Here, it is indisputable that there is a related action that is currently pending in the Northern District of California. Defendants have brought a declaratory action for nonenforceability against DRT in that district. And while DRT contends that this action was surreptitiously brought, DRT cannot deny it was a legitimate lawsuit based on the inconsistent record of assignment by Timeline. In addition, DRT’s contention that the declaratory action is irrelevant because it is identical to the counterclaims in this district is also unavailing. Counterclaims involving the same patents and products are compulsory rather than permissive. See FRCP 13(a)(1)(A); Akzona Inc. v. E.I. du Pont de Nemours & Co., 662 F.Supp. 603, 618 (D.Del. 1987) (citing 6 C. Wright & A Miller § 1410). Therefore Defendants were required to bring their counterclaims in this Court. Defendants’ strategy to bring a declaratory action in another district is a litigation tactic that the Court need not
question."

National Products, Inc. Wins at Federal Circuit

National Products Inc., a local maker of mounting products under the trademark RAM, won a victory at the CAFC yesterday. The opinion, authored by Chief Judge Michel, affirmed an order from the USDC in the Central District of California (Judge Audrey B. Collins) dismissing an action for declaratory judgment that was filed against NPI about a year ago by Panavise, Inc. Because NPI is a Darby client, I won't comment further other than to include some language from Judge Michel's opinion: "we do note that this appeal approaches wasting the court’s time and unduly delaying more deserving litigants."

Seattle Patent Litigation Update: September 2008

Three new patent cases were filed in Seattle last month, all three assigned to Judge Pechman.

September 26, 2008
Amphipod Inc v. Penguin Brands Inc
Pechman

September 16, 2008
Majestec 125 LLC v. Maritime Fabrications Inc
Pechman

September 12, 2008
Wistron Corporation v. Samsung Electronics Co Ltd et al
Pechman

Perhaps the most interesting of the three is the Wistron case against Samsung, where Taiwanese interests are at odds with with Korean interests over the right to sell and import certain PCs, laptops, notebooks, and other computing devices in the U.S.

Established in 2001, Wistron's product development focuses on information communication technology, including notebook and desktop systems that it supplies to other companies to sell under their own brand name. Some well known brands incorporating Wistron's products include Microsoft, HP, Dell, and Lenovo. Samsung is a well know manufacturer and seller of consumer electronic equipment ranging from DVD players to cell phones. According to the complaint, in 2007 Samsung had $7.4 Billion in income from nearly $100 Billion in sales.

There are three patents at issue in the Wistron case, all relating to Power Management, US Patent Nos. 5,410,713, 5,870,613, and 5,903,765. As a side issue, all three patents were once assigned to Smith Corona/Acer of New Canaan Conn., a company that, according to Wistron's website, was a predecessor in interest to Wistron (at least Acer Inc. was). USPTO assignment records show that these patents were assigned to Acer America Corportation in December 1995, and then to Wistron Corporation in July 2008. As yet another side issue, Samsung and Wistron are also parties to another lawsuit in the ND of California over US Patent Nos. 5,333,273, 5625,275, and 6,523,100, owned by Samsung. In the California case, Wistron is a DJ plaintiff. The California patents relate to ISA computer architecture, such as the intel x86 type microprocessor, in particular so-called "hot keys" that control "terminate and stay resident" (TSR) programs. Samsung has already successfully litigated the '273 patent in a case against Quanta, 3:00-CV-04524 VRW.

In other Seattle patent litigation news, Amazon was sued over home automation systems last month. It and 11 other companies were alleged to infringe US Patent Nos 6,891,838 and 7,103,511, patents covering systems that automatically adjust things like temperature, lights, security, entertainment, and plant watering, among other systems that use energy in your home. The plaintiff is SIPCO LLC, an entity that was formerly known as "Statsignal IPC LLC" according to filings before the Georgia Secretary of State's office. The patents in suit have changed hands six times since 2000, including a sojourn with Hunt Technologies, a company that was later absorbed by Landis+Gyr. SIPCO gained ownership of the patents by way of a judicial decree in July 2007, handed down by the U.S.D.C. in the Northern District of Georgia. I'm sure there is a story there, but I'm too busy to chase it down. SIPCO is related in some way to IP Co. LLC, they share the similar corporate addresses, names, and agents, according to Georgia Records (IP Co. used to be known as "Statsignal Metering Company, LLC."). IP Co. and SIPCO were plaintiffs in a case against Cellnet Technologies, Inc. and Hunt Technologies, LLC, (among others) filed in 2006 in Georgia.

Microsoft was also busy last month. Its summary judgment victory over Uniloc, Inc. was remanded by the CAFC for trial after en banc review was denied (08-1121). The Uniloc patent at issue is US No. 5,490,216 covering certain computer security technology. Microsoft was also sued by Stragent LLC (again) in connection with a patent for voice activation technology. The patent-in-suit is U.S. No. 7,424,431. Microsoft's other dispute with Stragent LLC is over U.S. 6,665,722. In that case, Microsoft is joined by Defendants, Nokia, Yahoo!, Google, Motorola, Palm, Sony Ericsson Mobile, and AT and T. The '722 patent owned by Stragent is alleged to cover certain mobile messaging systems.

Stragent is a patent holding company organized by Kevin Zilka of Zilka-Kotab P.C. Stragent acquired the '722 patent from BBN Technologies in 2007 and it acquired the '431 patent from Voice Demand, Inc. in the same year.

Guest Column on Extraterritoriality

This is the first in what I hope to be many guest columns. If you or anyone you know would like to post an article on WApatents.com, just send it to me for review. I reserve the right not to publish or to edit any articles you send me. Articles posted do not necessarily reflect my own views on the law; so if you disagree with something in a guest column, post a comment and contact the author.

This article is from Paul Beattie, an experienced Seattle patent litigator. What follows is a brief snippet from Paul's article. The full article is attached.

Extraterritorial Abdication: Extraterritorial Infringement Outpaces Extraterritorial Protection

By Paul Beattie[1]

The past twenty years have seen a progressive shift in economic activity, particularly manufacturing, away from the United States, Japan, and Europe to developing countries.[2] More and more inventions conceived in the “West” are being exploited in developing countries, often with no royalty payments to the inventors or their assignees. We are living through a colossal transfer of knowledge and invention from the developed to the developing world – although this transfer is seldom remarked upon.[3] U.S. patent law has been slow to recognize these realities and to extend U.S. patent protection to “infringing” activities abroad, perhaps out of sympathy for the developing world and out of fear that other countries will follow suit and attempt to enforce their laws here. Politics aside, U.S. patent law has failed to adapt to a world in which more and more infringement takes place overseas.

U.S. patent law has traditionally not been given so-called “extraterritorial” effect. As the Supreme Court stated in the recent case of Microsoft Corp. v. AT&T Corp., “[i]t is the general rule under United States patent law that no infringement occurs when a patented product is made and sold in another country.”[4] This is reflected in the main infringement provision in the U.S. patent statute, which states that “whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention . . . infringes the patent.”[5] U.S. patent law thus generally targets infringing activities within the United States, with minor exceptions.

Footnotes:

[1] Paul H. Beattie is a shareholder in the Seattle Office of Schwabe, Williamson & Wyatt. He can be reached at pbeattie@schwabe.com or at (206) 407-1566.
[2] Pete Engardio et al., The New Global Job Shift, Business Week Online, http://www.businessweek.com/%20magazine/content/03_05/b3818001.htm (Feb. 3, 2003); Josh Bivens, Economic Policy Institute Briefing Paper, Trade Deficits and Manufacturing Job Loss: Correlation and Causality.
[3] See, e.g., The Sydney Morning Herald, Chinese Accused of Stealing American Technology, http://www.smh.com.articles/2007/11/16/1194766968231.html.; Jacob Goldstein, Brazil Breaks Merck’s Patent on Aids Drug, Wall Street Journal.com, http://blogs.wsj.com/health/2007/05/04/brazil-breaks-mercks-patent-on-aids-drug/ (May 4, 2007); Mary Kopczynski, Robin Hood versus the Bullies: Software Piracy and Developing Countries, Rutgers Comp. & Tech. L. J. (Summer, 2007).
[4] Microsoft Corp. v. AT&T Corp., 127 S. Ct. 1746, 1750 (2007).
[5] 35 U.S.C. § 271(a) (emphasis added).

Extraterritorial%20Abdication1.doc

CAFC Reverses WDWA Decision on Personal Jurisdiction

In Campbell Pet Co. v. Maile, the Federal Circuit reversed an order finding personal jurisdiction lacking over an out-of-state defendant who had attended a trade show in Seattle and made verbal threats of patent infringement litigation. This decision reverses Judge Leighton's decision finding personal jurisdiction absent under Federal Circuit law (see my previous post on this decision here, where my description of the district court's order is rather prescient).

Here is some good coverage of the decision from the PLI patent law blog:

In June 2007, Ms. Miale (hereinafter "defendant") attended a three-day convention in Seattle, Washington, sponsored by the American College of Veterinary Internal Medicine. During that convention, the defendant demonstrated her products and offered them for sale. In the course of the convention, she took two orders for tables from residents of Virginia and New York, for a total purchase price of $9,400. Plaintiff Campbell also had a display at the convention featuring its products. In the course of the convention, the defendant and her mother confronted several of Campbell’s employees who were attending the convention and accused them of infringing the Miale patents.
In the month following the convention, Ty-Lift sent a letter to Campbell claiming that Campbell’s mobile folding stretcher infringed the Miale patents. Shortly thereafter, Campbell filed suit in the United States District Court for the Western District of Washington seeking a declaration of noninfringement and invalidity with respect to the Miale patents. In response, Ty-Lift moved to dismiss the complaint for lack of personal jurisdiction. The district court did granted the motion to dismiss, deciding that the level of contact between the defendants and the forum state was not sufficiently “substantial” and “continuous and systematic” to justify the exercise of general jurisdiction.
The Federal Circuit agreed that the district court was clearly correct in ruling that it did not have general jurisdiction over the defendants, but did not agree that there should be no specific jurisdiction. Specifically, in order to determine whether specific jurisdiction exists the court must determine whether the defendant has purposefully established minimum contacts with the forum state: (1) whether the defendant “has purposefully directed his activities at residents of the forum”; and (2) whether “the litigation results from alleged injuries that arise out of or relate to those activities.” When considering these inquiries the district court characterized the defendants actions at the June 2007 convention as constituting nothing more than attempts to inform Campbell of suspected infringement. This determination is what the Federal Circuit took issue with and ultimately disagreed with.
Employees’ affidavits asserted that the defendant did more at the trade show than simply inform Campbell that its animal stretchers might infringe her patents. The affidavits state that the defendant attempted to have plaintiff’s allegedly infringing products removed from the convention and that she told the plaintiff's customers that the products being sold were infringing. The Federal Circuit noted that it is critically important to the issue of personal jurisdiction that the defendant's patent rants were targeted at injuring the plaintiff's business in Washington and, therefore, could fairly be characterized as attempts to limit competition at the Seattle convention. Those efforts go beyond simply informing the accused infringer of the patentee’s allegations of infringement and open the defendant up to suit in Washington.

Seattle Patent Litigation Update: July 2008

It was a very busy month in July for patent litigation. Here is the case list.

July 29, 2008
Chef'n Corporation v. Trudeau Corporation
WA Western
Pechman
Patent
Federal Question
Plaintiff: Chef'n Corporation; Defendant: Trudeau Corporation

July 23, 2008
Northwest Agricultural Products, Inc. v. Emerald Bioagriculture Corp
WA Eastern
Shea
Patent
Federal Question
Plaintiff: Northwest Agricultural Products, Inc.; Defendant: Emerald Bioagriculture Corp

July 15, 2008
Malki v. Franke Commercial Systems Inc. et al
WA Western
Martinez
Patent
Federal Question
Plaintiff: Avraham Malki; Defendant: Franke Commercial Systems Inc., H & K Norwood Inc., McDonald's Corporation

Implicit Networks Inc. v. International Business Machines Corporation et al

WA Western
Tsuchida
Patent
Federal Question
Plaintiff: Implicit Networks Inc.; Defendant: International Business Machines Corporation, Oracle Corporation, Sap America Inc., Adobe Systems Incorporated
July 11, 2008

Loops, LLC et al v. Phoenix Trading, Inc. et al
WA Western
Martinez
Patent
Federal Question
Plaintiff: Loops, LLC, Loops Flexbrush LLC.; Defendant: Phoenix Trading, Inc., Wendy Hemming, Jeffrey R Hemming, H&L Industrial, Does
July 8, 2008

Widevine Technologies Inc v. Verimatrix Inc
WA Western
Robart
Patent
Federal Question
Plaintiff: Widevine Technologies Inc; Defendant: Verimatrix Inc

You might take notice that this list includes another patent case by Implicit Networks, a relatively unknown local technology owner with some pretty large bones to pick. Implicit's case filed last month is against IBM, Oracle, Adobe, and SAP. It also filed in February against Intel, AMD, Sun, NVIDIA, Raza, and Real Networks. Made me think "Hey ... you forgot someone ... 'your potential, our passion.'"

Implicit's 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. The patents-in-suit are for computer-server software that performs faster security functions, US 6,324,685, and 6,976,248.

Implicit's case against Intel and others involves US Patent No. 6,629,163 covering "A method and system for demultiplexing a first sequence of packet components to identify specific components wherein subsequent components are processed without re-identifying components." This is basically, a system for processing encrypted data. According to allegations in the Complaint, this technology is used in Intel's Viiv platform, the Java Media Framework, ATI Radeon hardware, software from NVIDIA called Stant, and other products.

In both cases, Implicit is represented by James Rogers, as well as Ed Goldstein, Corby Vowell, adn Matt Prebeg of Houston, Texas. Texas lawyers filing contingent fee-patent litigation in Seattle? Why not. You'll get to trial faster here than in the so-called "rocket docket" of East Texas, where patent cases are languishing due to a back-log.

Claims Construction Order in Wide, Short Ski Case against K2

Judge Lasnik recently construed claims for US Patent No. 5,603,522 for a "Wide, Short Ski." The case is one for infringement brought by inventor Paul Nelson against K2 Corporation. The parties disputed six claim terms from independent claim 1. Not surprisingly, the patent here uses words of approximation, like "about" and "approximately" to describe some numerical measurement ranges. Using the prosecution history as support, Judge Lasnik ruled that these words will be constituted to provide a +/- 3% range from the claimed measurements. This will set the boundary for a determination of literal infringement.

One interesting snippet from this Order is that Judge Lasnik all but ignored evidence from a patent attorney as to what these words ought to mean, saying "Absent evidence that [the patent attorney] is one skilled in the art of designing and/or manufacturing skis, his opinion regarding the proper interpretation of the claim terms is not useful to the Court." (citing Network Commerce, Inc. v. Microsoft Corp., 422 F.3d 1353, 1361 (Fed. Cir. 2005) (quoting Phillips, 415 F.3d at 1318).


NelsonvK2claimsconstruction.pdf

Federal Circuit Vacates Exceptional Case Finding and Over $6 million Dollar Award of Attorneys Fees

Catching up on my reading, I notice that in May, the Federal Circuit affirmed in-part, remanded, and vacated in-part a judgment entered following a two-week bench trial here in Seattle between TALtech Limited and Esquel Apparel, Inc. involving US Patent No. 5,568,779, a patent covering a seam for "wash-and-wear" dress shirts that solved the problem of puckering when laundered (WDWa Case No. 04-cv-974).

Judge Zilly entered findings of fact and conclusions of law in March 2007 invalidating the '779 patent on a rarely successful best mode argument (use of a preferred adhesive was apparently not disclosed), and he also found the patent unenforceable due to inequitable conduct for failure to disclose a prior art raincoat seam that had "inspired" the invention. The patent was also found not to be infringed by Defendants. (How is that for a complete defense victory? Makes one wonder why plaintiffs did not demand a Jury, especially after some of the pre-trial rulings in the case, providing a rather narrow claim interpretation and failing to find literal infringement as a result, which should have indicated which way the wind was blowing. But, I know hindsight is 20/20.)

Over $6 million dollars in attorneys fees were awarded to the Defendant under 35 U.S.C. 285 because the case was deemed "exceptional" as a result of the inequitable conduct and misconduct of Plaintiffs during litigation.

The Federal Circuit affirmed findings of invalidity and non-infringement, but vacated the finding of inequitable conduct, and the over $6 million dollar award of attorneys fees because it was based "at least in part" upon a finding of inequitable conduct. The case was remanded so the Court could consider whether the undisclosed prior art was cumulative of other art before the examiner.

I would expect some supplemental briefing on the "cumulative" issue. The Federal Circuit definitely left the door open for a finding that the undisclosed prior art was not cumulative, and given the highly factual nature of this finding, it may prove difficult to overturn on appeal. Further, exceptional case findings could be revised, finding independent basis in litigation misconduct, although this would probably receive very close scrutiny by the Federal Circuit.

Seattle Patent Litigation Update (May-June 2008)

So my trial is now over. My posts will pick up and be more frequent. I'm happy to report a victory for one local inventor over Sears Roebuck and their advertising firm, Young & Rubicam. Jury returned a verdict for $1.7 million on Wednesday afternoon. It's a copyright case, so I won't go into detail here. If you are interested, here is a link to today's story in the Seattle Times.

May and June saw some interesting new patent filings in Washington. Here is a list:

June 10, 2008
Nintendo of America Inc v. Nyko Technologies Inc	WA Western	Lasnik	Patent	Federal Question
Plaintiff: Nintendo of America Inc; Defendant: Nyko Technologies Inc
May 28, 2008
Microscan Systems Inc v. Cognex Corporation	WA Western	Martinez	Patent	Federal Question
Plaintiff: Microscan Systems Inc; Defendant: Cognex Corporation
May 22, 2008
Brower v. Lowe's Companies Inc et al	WA Western	Robart	Patent	Patent Infringement
Plaintiff: Jerry E Brower, Jerry E Brower Defendant: Lowe's Companies Inc, Lowe's HIW Inc, Homax Products Inc
May 20, 2008
Westfield Outdoor Inc v. GCI Outdoor Inc	WA Western	Jones	Patent	Declaratory Judgement
Plaintiff: Westfield Outdoor Inc, Westfield Outdoor Inc, Westfield Outdoor Inc Defendant: GCI Outdoor Inc

The most interesting of these cases to me is Nintendo's action over Nyko Technologies to enforce rights in the NUNCHUCK controller for the Wii. Now that is what I like to see: a major technology player from the PNW showing confidence in our local district court to sort out complicated IP matters. This case is also interesting because it seeks to enforce design patent rights in the shape of the controllers amid great uncertainty in the law concerning design patent rights. The Federal Circuit has yet to issue a decision in the en banc review of Egyptian Goddess v. Swisa. Here is a link to post about amicus briefs offered in connection with that case, one of which I co-authored earlier this year on behalf of the Federal Circuit Bar Assocaition.

Trainman Lantern Company Wins Summary Judgment of Non-infringement

Some of you may remember my post about this case in March involving US 7,118,245 for a Trainman Lantern. The Plaintiff in this case, A.G. Design & Associates, LLC, sells patented lanterns to Burlington Northern Santa Fe and other railroads for use by trainmen and engineers. They sued Trainman Lantern Company and initially won a preliminary injunction from Judge Burgess, ordering TLC to cease marketing the accused device. This injunction was vacated by the Court of Appeals for the Federal Circuit and TLC has now won summary judgment of non-infringement. The primary argument was prosecution history estoppel for the element “a plurality of ports in said reflector that permit light from said primary source to pass through in a lateral direction so as to augment said light source from at least one secondary source,” a limitation added to the broadest independent claim during prosecution. There was no dispute that TLC did not literally infringe, so the only question before the court on summary judgment was whether the plaintiff had sufficient evidence to rebut the presumption of surrender for application of prosecution history estoppel. Judge Leighton found they could not, and granted Summary Judgment for TLC.


Trainman143%20Order%20granting%20part%20denying%20part%20defendants%20summary%20judgment.pdf

Seattle Patent Litigation Update: May 2008

Things finally slowed down last month in terms of new patent case filings in the Western District. There was just one new case hitting the electronic docket in May, and it was actually filed in April, so it really doesn't count as a May filing. Since it didn't make April's list, I'll post it here.

The case is Vtran Media Technologies, LLC v. Astound Braodband LLC (C08-0650) (Pechman) This is the fourth patent case in the last 30 days assigned to Judge Pechman.


The patent in suit is US 4,890,320 "Television Broadcast System for Selective Transmission of Viewer-Chosen Programs at Viewer-Requested Times." It's got a crusty old filing date of June 9, 1988. With an issue date of December 26, 1989, the patent will expire June 9, 2008 (assuming no extensions). Are you thinking laches? Estoppel? Me too.

UPDATE: Thanks to reader Andrew P for correcting my error on calculating the termof this patent under the GATT rules. This patent expired June 9, 2008, not December 2006 as I had said previously. Also, there is a second patent,
US 4,995,078, with a filing date of 10-10-89 and issue date of 2-19-91. Under GATT transition rules, this patent will expire October 10, 2009.


The patent has been in litigation since about October 2007. Below is a list of related cases and there's an MDL No. assigned, MDL No. 1948


May 16, 2008
VTran Media Technologies, LLC v. Liberty Cablevision of Puerto Rico, Inc.
PR
Casellas
Patent
Federal Question
Plaintiff: VTran Media Technologies, LLC; Defendant: Liberty Cablevision of Puerto Rico, Inc.

April 9, 2008
Vtran Media Technologies,LLC v. Advocate Communications,Inc. et al
FL Southern
Cooke
Patent
Patent Infringement
Plaintiff: Vtran Media Technologies,LLC; Defendant: Advocate Communications,Inc., Home Town Cable TV,LLC

March 21, 2008
VTran Media Technologies, LLC v. Antietam Cable Television, Inc.
MD
Garbis
Patent
Patent Infringement
Plaintiff: VTran Media Technologies, LLC; Defendant: Antietam Cable Television, Inc.

March 3, 2008
VTran Media Technologies, LLC v. Mid-Hudson Cablevision Inc.
NY Northern
Kahn
Patent
Federal Question
Plaintiff: VTran Media Technologies, LLC; Defendant: Mid-Hudson Cablevision Inc.

February 21, 2008
VTran Media Technologies, LLC v. Midcontinent Communications
ND
Erickson
Patent
Federal Question
Plaintiff: VTran Media Technologies, LLC; Defendant: Midcontinent Communications

February 19, 2008
VTran Media Technologies, LLC v. Bresnan Communications, LLC et al
NY Southern
Daniels
Patent
Patent Infringement
Plaintiff: VTran Media Technologies, LLC; Defendant: Bresnan Communications, LLC, Insight Communications Company, Inc.

February 14, 2008
VTran Media Technologies, LLC v. Armstrong Utilities, Inc. et al
OH Northern
O'Malley
Patent
Patent Infringement
Plaintiff: VTran Media Technologies, LLC; Defendant: Armstrong Utilities, Inc., Buckeye Cablevision, Inc., Massillon Cable TV, Inc., WideOpenWest Holdings, LLC

February 8, 2008
VTran Media Technologies, LLC v. Cox Communications, Inc.
GA Northern
Story
Patent
Patent Infringement
Plaintiff: VTran Media Technologies, LLC Defendant: Cox Communications, Inc.

January 31, 2008
VTran Media Technologies, LLC v. Atlantic Broadband Finance, LLC et al
PA Middle
Caldwell
Patent
Patent Infringement
Plaintiff: VTran Media Technologies, LLC; Defendant: Atlantic Broadband Finance, LLC, Cablevision Systems Corporation, MetroCast Cablevision of New Hampshire, LLC

VTRAN MEDIA TECHNOLOGIES, LLC v. ARMSTRONG UTILITIES, INC. et al
PA Eastern
KAUFFMAN
Patent
Patent Infringement
Plaintiff: VTRAN MEDIA TECHNOLOGIES, LLC; Defendant: ARMSTRONG UTILITIES, INC., BLUE RIDGE COMMUNICATIONS, INC., RCN CORPORATION, SERVICE ELECTRIC TELEVISION, INC.

January 30, 2008
VTran Media Technologies, LLC v. Bright House Networks, LLC et al
AL Northern
Ott
Patent
Patent Infringement
Plaintiff: VTran Media Technologies, LLC; Defendant: Bright House Networks, LLC, Knology, Inc, Mediacom Communications Corporation

January 25, 2008
VTran Media Technologies, LLC v. Cebridge Acquisition L. P.
TX Eastern
Ward
Patent
Patent Infringement
Plaintiff: VTran Media Technologies, LLC; Defendant: Cebridge Acquisition L. P.

October 17, 2007
VTran Media Technologies, LLC v. Comcast Corporation et al
TX Eastern
Ward
Patent
Patent Infringement
Plaintiff: VTran Media Technologies, LLC; Defendant: Comcast Corporation, Charter Communications, Inc., Verizon Communications, Inc., Time Warner Cable, Inc.

That's all for now. Back to trial prep for me.

Vtrancomplaint.pdf

Washington State Patent Law Association Files Amicus Brief in Bilski

On April 4, 2008 the Washington State Patent Law Association (WSPLA) filed an amicus brief in support of Petitioner Bernard L Bilksi and Rand A Warsaw in the case currently under en banc consideration by the CAFC, In re Bilksi. My earlier posts on this case can be found here and here.

WSPLA's brief was signed by Michael Swope over at Woodcock Washburn. Also on the brief were Grzegorz S Plichta (Woodcock Washburn), Dale Bar, President of WSPLA and lawyer at Lee and Hayes, and Peter J Knudsen, IP counsel for Nastech Pharmaceutical Co., Inc.

Dennis Crouch over at Patently O, has a good summary of all Amicus Briefs filed in the case.

Report for Washington State Patent Cases: March 2008

Patent case filings in Washington State remained strong through March. There were four cases filed total; three in the Western District and one in the Eastern District. This is one better than March 2007, which only had three patent cases total. So far, Washington is substantially ahead of where it was last year at this time in terms of the number of patent cases filed. Through March last year, there were only nine (9) patent cases filed. This year's total through March is eighteen (18), that's an increase of 100%.

Here is a list of cases for March.

Zacklift International Inc v. Kooima (WA Eastern) Judge Van Sickle

Progressive International Corporation v. CKC International LLC (WA Western) Judge Theiler

Cequint Inc v. TECMobile Software LLC (WA Western) Judge Jones

CRS LLC v. Valve Corp. (WA Western) Judge Donohue

Preliminary Injunction in Tacoma Lantern Case Reversed by the CAFC

Note: This post was modified on 3/27/2008 to reflect the fact that the opinion is nonprecedential.

In this case for infringement of US 7,118,245, the USDC, WDWA in Tacoma granted the plaintiff's motion for preliminary injunction on July 3, 2007. In ordering the preliminary injunction, the district court (Judge Burgess) noted that expert testimony provided that the accused device was "identical in all respects (within + or - .005) to the Patented Device, except that the Accused Device lacked the ‘plurality of ports’ in the reflector that would allow the central light to augment the lateral light." Additionally, the district court briefly discussed a covenant not to compete between the parties, concluding that "because a serious question has been raised on the issue of the Covenant Not To Compete . . . another basis for preserving the status quo pending final resolution of the issue has been shown."

Today in a nonprecedential opinion authored by Judge Prost and joined by Judges Rader and Schall, the CAFC reversed finding that substantial questions existed as to whether the accused devices infringed under a doctrine of equivalents analysis, and that even if the covenant not to compete were enforceable, it had expired.

Microsoft's Data Base Patent Invalidated in Suit with Veritas

As predicted in my earlier post on this case, Judge Coughenhour accepted findings by the special master and invalidated Microsoft's U.S Patent No. 5,558,147. The case is not over by any means. Microsoft is positioned quite well for the upcoming May 2008 trial with total damages on the contract claims capped at $4,000,000. Microsoft finds that kind of money in the cushions of its executive lounge couch. More coverage on this order is available from IP360 if you have a subscription.
VeritasMSJ147.pdf

Claims Construction Order on Alliance Packaging v. Smurfit-Stone Container Corp.

In this case, Plaintiff Alliance Packaging asserts infringement of U.S. Patent No. 7,156,287 against Altivity Packaging LLC. The patent-in-suit is for a container with a spout. Judge Zilly recently held a Markman hearing and construed the following terms of the '287 patent claims: "lower side" "acute angle" and "cover the concavity." The order is attached below.


Alliance%20Packaging%20Claims%20Constrution%20Zilly.pdf

Western District Patent Case Filings Remain Strong through February

Patent case filings in Seattle and Tacoma remained strong through February following a red-hot January. While there weren't half as many filings as in January, February 2008 saw four patent cases filed in Seattle and Tacoma, that is more than February 2007 which saw only three and more than February 2006, which also had only three. Total patent cases this year so far in Washington state number 14, with almost all of those in the Western District.

Laughing Rabbit Inc. V. Nashbar and Associates Inc., (08-cv-00339) (Judge Martinez) US Pat. No. D375,372 "Pocket Flashlight"

JE Hynds LLC v. Hopscotch Technology Inc., (08-cv-5083) (Judge Arnold in Tacoma) U.S. Patent No. 7,162,378 "Point of Play Terminal"

BE Meyers and Co. v. Advanced Armament Corp., (o8-cv-00228) (Judge Theiler) U.S. Patent No. 6,837,139 "Flash Suppressor"

Implicit Networks Inc. v. Advanced Micro Devices, Inc., (08-00184) (Judge Robart) U.S. Patent No. 6,629,163 "Methods and System for Demultuplexing a First Sequence of Packet Components to Identify Specific Components Wherein Subsequent Components are Processed Without ReIdentifying Components."

For more statistics about Seattle Patent Litigation, Follow this link.