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.

Seattle Patent Litigation Update Fall 2009

Seeing that it has been almost a month since I last posted, I thought I needed to break the silence and provide an update on the world of Seattle patent litigation.

For my part, things have been extremely busy over the last 30 days, which included a trip back to the CAFC to argue a design patent case, one of the first that might extend the Egyptian Goddess holding into determinations of invalidity. The case is International Seaway Trading Corp. v. Walgreens (2009-1237). My panel was made up of Judge Bryson, Dyk, and Clevenger. Here is a link to the audio. On the day I argued, my colleague here at Darby's Seattle office, David Tellekson, argued National Products Inc. v. Gamber Johnson LLC (2009-1195) before a panel made up of Judges Newman, Moore, and Plager. I was able to watch David's argument live (audio link here), after which I retired to the library on the 4th floor of the Howard T. Markey National Courts building to review a few more cases and finish my outline (none of which I was able to give given the constant peppering of questions I received from the panel).

I can report the case that David argued, an appeal from a decision by Judge Jones here in the Western District of Washington, where we represented the appellee, National Products Inc, the panel summarily affirmed under Circuit Rule 36. As for my case, I'm still waiting to hear.

In other Seattle patent litigation news, there have been just four cases filed since August. They are listed below. Year to date, only 30 patent cases have been filed in the WD of WA, that is substantially less than last year at this time, there were 39 patent cases filed by by the end of October 2008.

Here is a list of the cases filed since August.

October 5, 2009
Laughing Rabbit Inc v. Stever (Judge Pechman)

October 1, 2009
Logan v. BabyPlus Company et al (Judge Robart)

September 29, 2009
Lectent LLC v. SAS Group Inc et al (Judge Leighton)

August 25, 2009
National Products, Inc v. Gamber-Johnson LLC (Judge Pechman)

Surgical Trainer Patent Case Headed for Trial in October

Simulab Corp. will get a jury this fall to decide claims for infringement of U.S. Patent No. 6,780,016, a patent for a "Human Surgical Trainer and Methods for Training." Infringement claims are being asserted against Synbone AG, a Swiss company. My previous posts here and here, discussed Judge Zilly's summary judgment rulings, expressing skepticism that "Simulab can demonstrate the requisite layer properties and relationships" claimed in the patent.

Simulab was asked to present an offer of proof setting forth how it intended to prove infringement. Simulab's offer of proof was supported by the 15 page declaration of the inventor, Christopher C. Toly (PDF link below). Evaluating Simulab's offer and the declaration of Mr. Toly, Judge Zilly initially ruled as follows:

"The Court is not satisfied that Mr. Toly’s most recent declaration addresses in any meaningful way the fundamental question whether the adhesive layers of Sites 4 and 5 and the film layer of Site 7 are more difficult to dissect that the simulated skin layers at those sites of the SYNMAN. Mr. Toly, however, has provided the relevant density figures, tending to show the density relationships required by Claim 43 of the ’016 Patent, and the Court is persuaded that any further briefing from defendant would simply demonstrate an issue of material fact precluding summary judgment. Thus, the Court will set a trial date concerning the sole remaining allegation that Sites 4, 5, and 7 of the SYNMAN infringe Claim 43 of the ’016 Patent."

Defendants moved to reconsider, citing as error, the Court's conclusion that "further briefing from defendant would simply demonstrate an issue of material fact precluding summary judgment"

After requesting a response to the motion to reconsider, the Court denied the motion, and set trial for October 26, 2009. Judge Zilly's order states as follows:


"Although the Court remains skeptical that plaintiff will be able to establish the relative ease or difficulty of dissection relationships required in connection with Claim 43 of the ’016 Patent, see Minute Order at ¶ 2 (docket no. 43); Order at 12 n.5 (docket no. 40), the Court is reluctant to rule as a matter of law on the merits of plaintiff’s remaining claim of infringement. In its offer of proof, plaintiff presented evidence of density relationships consistent with the language of Claim 43. For pretrial purposes, defendant does not dispute plaintiff’s density figures. See Motion for Reconsideration at 2 (docket no. 44). Instead, in its motion for reconsideration, defendant for the first time asserts that density bears no consistent relationship with the relative ease or difficulty of dissection. Id. Defendant, however, has offered no expert or other testimony to support this proposition, and has not suggested any alternative means of quantifying the relative ease or difficulty of dissection of the materials at issue."

An interesting side comment from the Court in this order says "In reaching its conclusions, the Court has also considered the timing of defendant’s motion for summary judgment, which was filed more than two months before the close of discovery, and which was the basis for the Court’s subsequent stay of discovery."

To me, this is an indication that Defendant should have waited until discovery closed to file its motion, or it should have made a case why early SJ was appropriate.

Waiting is hard (and expensive) for any litigant, but it is especially hard for defendants who think a plaintiff's case lacks merit. One practice tip for SJ motions filed before the close of discovery, especially in Judge Zilly's court and I speak from experience, is to explain (preferably in your opening brief) why further discovery will not lead to a genuine issue of material fact. Arguments as to why early SJ is in the interest of justice and judicial efficiency are also a good thing to include.

In other words, don't just file your motion early because Rule 56 says you can. (saying motions for SJ can be filed "after 20 days have passed from commencement of the action"). Rather, explain why the timing is appropriate. This way, you might have a shot at obtaining an early, more cost-effective victory for your client

simulabtollydeclaration.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

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.

Patent Litigation Statisitics in Washington State 2008

Looking back on another year of patent litigation in Washington State, 2008 started out with a bang but fizzled to end the year down about 15% from last year , with just 42 cases through December. Washington had more patent cases this year than its neighboring states, Oregon (19); Idaho (3); and Alaska (0), but its patent docket in 2008 was still considerably smaller than California's (413), Texas' (394), New York's (160), Delaware's (165), and Illinois' (158), to name a few of the busiest jurisdictions in 2008. Washington's patent case load in 2008 was comparable to case loads from Georgia (55), Minnesota (47), Wisconsin (64), Virginia (56), and Massachusetts (51). (Source: Justia, as of 12/21/2008)

Judge Martinez (8) and Judge Pechman (7) were assigned the most patent cases in 2008. Other Judges were assigned about half as many, such as Judge Jones (4), Judge Robart (5), and Judge Lasnik (3). (Numbers are from the cases as assigned by the clerk's office. Cases may have been reassigned since then) Judge Zilly is on senior status but he was assigned two patent cases in 2008. Judge Coughenhour, also on senior status, is apparently no longer taking trademark cases and he was not assigned a patent case last year either.

Here is the complete 2008 case list by month filed and assigned judge.

November
Data Retrieval Technology LLC v. Sybase Inc et al	WA Western	Martinez
Vectra Fitness Inc v. Torque Fitness LLC	WA Western	Jones
October
ADC Technology Inc v. Microsoft Corporation et al	WA Western	Martinez
September
Amphipod Inc v. Penguin Brands Inc	WA Western	Pechman
Majestec 125 LLC v. Maritime Fabrications Inc	WA Western	Pechman
Wistron Corporation v. Samsung Electronics Co Ltd et al	WA Western	Pechman
August
Laughing Rabbit Inc v. OpticsPlanet Inc	WA Western	Robart
July
Chef'n Corporation v. Trudeau Corporation	WA Western	Pechman
Northwest Agricultural Products, Inc. v. Emerald Bioagriculture Corp	WA Eastern	Shea
Malki v. Franke Commercial Systems Inc. et al	WA Western	Martinez
Implicit Networks Inc. v. International Business Machines Corporation et al	WA Western	Tsuchida
Loops, LLC et al v. Phoenix Trading, Inc. et al	WA Western	Martinez
Widevine Technologies Inc v. Verimatrix Inc	WA Western	Robart
June
Nintendo of America Inc v. Nyko Technologies Inc.	WA Western	Lasnik
May
Microscan Systems Inc v. Cognex Corporation	WA Western	Martinez
Brower v. Lowe's Companies Inc et al	WA Western	Robart
Westfield Outdoor Inc v. GCI Outdoor Inc	WA Western	Jones
April
TGN, Inc v. CRS, LLC	WA Western	Pechman
VTran Media Technologies LLC v. Astound Broadband LLC et al	WA Western	Pechman
Unigen Pharmaceuticals Inc v. Perrigo Company et al	WA Western	Leighton
Gardner v. Toyota Motor Corporation et al	WA Western	Jones
Koninklijke Philips Electronics NV	WA Western	Pechman
American Piledriving Equipment Inc v. Hydraulic Power Systems Inc et al	WA Western	Martinez
Progressive International Corporation v. Jo-Ann Stores Inc.	WA Western	Lasnik
March
Zacklift International Inc v. Kooima	WA Eastern	Van Sickle
Progressive International Corporation v. CKC International LLC	WA Western	Theiler
Cequint Inc v. TECMobile Software LLC	WA Western	Jones
CRS LLC v. Valve Corp	WA Western	Donohue
February
Laughing Rabbit Inc v. Nashbar & Associates Inc	WA Western	Martinez
J & E Hynds LLC v. Hopscotch Technology Inc	WA Western	Arnold
BE Meyers & Co Inc v. Advanced Armament Corp	WA Western	Theiler
Implicit Networks Inc v. Advanced Micro Devices Inc et al	WA Western	Robart
January
Zodiac of North America Inc et al v. 1181969 Ontario Limited et al	WA Western	Martinez
Laughing Rabbit Inc v. J&S Marketing LLC	WA Western	Lasnik
Sterling International, Inc. v. Hiscox et al	WA Eastern	Shea
Airbiquity Inc v. AT&T Inc et al	WA Western	Theiler
Cequint Inc v. Pint-Sized Apps	WA Western	Robart
Cequint Inc v. Incipher Inc	WA Western	Zilly
Trinity Glass International Inc v. ODL Incorporated	WA Western	Bryan
Fascinations Toys & Gifts Inc v. Levitation Arts Inc et al	WA Western	Robart
Neometal WA Inc v. Industrial Strength Corporation	WA Western	Leighton
Procyte Corporation v. Johnstone et al	WA Western	Zilly

Philips Electronics Can't Overturn Interference Ruling

In the United States (at least for the time being), the first person to invent has superior rights in a dispute involving multiple claims covering the same subject matter. According to a decision by the USPTO's Board of Patent Appeals and Interferences, 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 '741 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 defiblliation pulse," because no matter how those terms were construed, the specific interpretation would not have impacted the Board's ultimate decision.

From Judge Pechman's order:

The issue presented by this motion is whether the Board erred in failing to construe the
claim “impedance-compensated defibrillation pulse.” The Board never made a single decision
not to construe the claim, but instead determined that claim construction was not necessary to resolve Philips’ preliminary motions. No authority suggests that the Board is required to
perform claim construction when it is not necessary to decide an issue presented in a party’s
motion.

phillips146action_orderdismissining.pdf

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.

Defendant Not "Entitled" to Discovery on Claim For Section 285 Fees

In a case where the underlying claims of infringement were dismissed voluntarily under Rule 41, Judge Jones recently ordered that a defendant was not entitled to take discovery in order to support a theory that the case was "exceptional" under 35 USC Section 285.

From Judge Jones' order:

G-J appears to concede that it cannot substantiate its § 285 attorney fee request
without additional discovery. G-J will apparently base its § 285 request solely on its
allegations of inequitable conduct. See Dkt. # 46 at 7 (stating that G-J “is willing to
forego, without prejudice, its declaratory judgment claims of noninfringement and
invalidity, and to focus discovery and proceedings on the inequitable conduct claim”);
Dkt. # 55 at 7 (“G-J has already agreed to shorten and simplify this case by focusing
discovery on its inequitable conduct claim.”). G-J complains, however, that it “has not
been given the chance to substantiate its claims,” and that the court should permit it to
take discovery for that purpose. Dkt. # 46 at 9.


The court finds no merit in G-J’s contention that the mere fact that it has
counterclaims pending entitles it to discovery. The court has broad discretion to control
the scope of discovery. See Childress v. Darby Lumber, Inc., 357 F.3d 1000, 1009 (9th
Cir. 2004); see also Fed. R. Civ. P. 26(b)(1). The court’s April 23 order established that
the scope of the declaratory judgment counterclaims was no more extensive than the
scope of G-J’s request for § 285 attorney fees. The court will limit discovery in
accordance with the scope of the counterclaims.

***


[T]he court noted that it could have dismissed G-J’s counterclaims, retaining jurisdiction solely “to enter declaratory relief as appropriate in resolving G-J’s request under § 285.” Id. at 12 n.5.


judgejonesorderon285.pdf

Seattle Patent Law Community Mourns the Passing of Lee Johnson

Friends, family, and local patent practitioners met yesterday to mourn the loss of Lee Johnson, a talented engineer and patent lawyer who spent over 35 years as named partner of one of Seattle's oldest IP boutiques, Christensen O'Connor Johnson Kindness (commonly referred to by the acronym COJK). Lee was an excellent lawyer and friend. Funeral services were held in Seattle's historic Plymouth Congregational Church and it was standing room only.

I had the pleasure of working with Lee for seven years at COJK and I try to emulate his dedication to this profession and his focus on client service. Lee was the ideal mentor for a young lawyer, bringing the same dedication and focus to this role as he did his legal practice. He introduced me to Seattle Rotary and led by exemplifying the Rotary motto of "service of above self." At age 65, he left us too soon after struggling with cancer for the last year.


Lee was born October 4, 1942 in Ames, Iowa and was raised in the small idyllic farming community of Avoca, Iowa. He graduated from Iowa State University in 1964 with a degree in chemical engineering and was accepted into the patent training program at The DuPont Company in Washington D.C. where he worked during the day and studied law in the evening at Georgetown University. In 1971, after working briefly for a law firm in Dallas, Lee accepted a job in Seattle with the small IP boutique Christensen & Sanborn. It was here that Lee joined Bruce O'Connor, a fellow Georgetown graduate. O'Connor and Johnson were later joined by Gary Kindness, and partnership of COJK was formed in 1976.

Over the years, COJK represented some of the Northwest's finest companies, including Microsoft, Boeing, Amazon, Nintendo, and Weyerhaeuser. Lee was instrumental in firm leadership, helping to grow the firm from 4 lawyers in the 1970s to over 50 attorneys in 2001-2, most with engineering or technical degrees.

Lee was an avid boater. He and partner Gary Kindness owned a 46 foot Grand Banks cruiser that they kept in the San Juan Islands. Named by combining their two last names Johnson and Kindness, "the Jokin" was an omnipresent guiding vessel for the annual COJK boat trip in the San Juans. The boat was always spotless too. Lee was aboard the Jokin, enjoying a vacation with his family in Desolation Sound just weeks ago.

Lee will be missed but not forgotten. He's left an important mark on my professional career, and lawyers will do well always if they only try and be more like Lee Johnson.

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

Seattle Patent Litigation News

It's been a while since I've posted. I know both of you are disappointed (hi mom). Reason for the hiatus is that I've been preparing for trial. So expect my posts to be less frequent through about the end of July.

There's still a lot to report on the local patent litigation front. First, as I'm sure many of you already know, Nintendo was hit with a significant infringement verdict by a Texas jury last week, in the amount of about $21 Million. My previous post on this case can be found here. Here is a bit of coverage of the case from IP 360

Thursday, May 15, 2008 --- Nintendo Inc. was ordered to pay a small Texan
patent holder $21 million on Wednesday for infringing patents related to the
controllers for its popular GameCube and Wii video-gaming systems.
A federal jury found that Nintendo infringed Anascape Ltd.'s patents with its
WaveBird and Gamecube controllers for the GameCube and Wii Classic
controller for the Wii. The Wii remote and nunchuck controllers were not
included in the suit.
The jury's verdict followed a two-week trial in the U.S. District Court for the
Eastern District of Texas.
"We are extremely pleased with the jury's verdict. Anascape may be a tiny
company compared to Nintendo, but today's verdict confirms that the
company's technology is second to none,” said Doug Cawley of McKool
Smith PC, which represented Anascape.
A representative for Nintendo said the company was planning on appealing
the ruling and that the appeals court would “promptly reduce the dollar
amount of the verdict significantly.”

In other news, the Western District of Washington published its set of proposed patent rules. Check them our by following this link: http://www.wawd.uscourts.gov/proposedlocalrules.htm

I'd like someone to offer to guest blog about these rules since I won't have the time for a while (no Mom, you can't). Please let me know if you have time/interest in writing a little summary of the proposed new rules, and perhaps comparing them to other districts, like the ED Texas, or ND Cal.

Finally, Local software company Widevine Technologies Inc., has expanded its patent infringement case against competitor Verimatrix in the ED of Texas. The suit involves video encryption technology, and since my firm is handling the case on behalf of Widevine, I'll just post some snippets from the recent IP 360 article.

Tuesday, May 20, 2008 --- Widevine Technologies Inc. has stepped up its
legal battle against Verimatrix Inc., filing an amended complaint that adds
another patent to its infringement suit over video encryption technology.
The amended complaint, filed Tuesday in the U.S. District Court for the
Eastern District of Texas, takes aim at Verimatrix's video content authority
system, claiming the VCAS product infringes on Widevine's U.S. Patent
Number 7,376,831, which covers Widevine's Cypher technology for video
encryption.
Widevine first launched its suit against Verimatrix last August over
Verimatrix's alleged infringement of U.S. Patent Number 7,165,175. That
patent, issued in January 2007, covers methods and systems for selectively
encrypting different portions of data, such as video or audio, that are sent
over the Internet, according to the original complaint.
Widevine's amended complaint claims that Verimatrix was already aware of
the '175 patent as early as March 2007, when Widevine sent a letter
informing Verimatrix that the ’175 patent had issued.

That's all for now.

Seattle Patent Litigation Report: April 2008

April was a very busy month for patent litigation in the Western District of Washington. Wacom settled its patent dispute with competitor, Hanvon, Microsoft and Veritas settled their decade old database dispute, and there were seven new cases filed.

TGN, Inc v. CRS, LLC, (2:2008cv00680) (Pechman)

VTran Media Technologies LLC v. Astound Broadband LLC et al , (2:2008cv00650) (Pechman)

Unigen Pharmaceuticals Inc v. Perrigo Company et al, (3:2008cv05258) (Leighton)

Gardner v. Toyota Motor Corporation et al, (2:2008cv00632) (Jones)

Koninklijke Philips Electronics NV, (2:2008cv00543) (Pechman)

American Piledriving Equipment Inc v. Hydraulic Power Systems Inc et al, (2:2008cv00537) (Martinez)

Progressive International Corporation v. Jo-Ann Stores Inc (2:2008cv00514) (Lasnik)

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

Plaintiff Ordered to Produce More Specific Infringement Contentions

The Plaintiff in the case Gebr. Tigges Gmbh & Co. KG v. EYS Metal Sanayi Ltd. (C07-1673) (Lasnik, J.) was ordered to produce more specific infringement contentions in response to the Court's scheduling order calling for "preliminary infringement contentions."

The order states as follows:

The Local Rules for the Western District of Washington do not currently [NOTE: I think the key word from our Chief Judge here is "currently"] define requirements for preliminary infringement contentions. As a guideline, however, many courts, including this Court, look to the Patent Local Rules for the Northern District of California and case law interpreting the rules. See, e.g., McKesson Info. Solutions LLC v. Epic Sys. Corp., 242 F.R.D. 689, 695 n.1 (N.D. Ga. 2007) (stating that decisions of the U.S. District Court for the Northern District of California provide persuasive authority). These rules require PICs to identify “specifically where each element of each asserted claim is found within each Accused Instrumentality” and to declare whether the element “is claimed to be literally present or present under the doctrine of equivalents.” U.S. Dist. Ct. N.D. Cal. Patent LR 3-1(c-d). The courts in the Northern District of California have interpreted this rule as requiring that PICs: reflect “all facts known to [the plaintiff] including those discovered in their Fed. R. Civ. P. 11 pre-filing inquiry,” and contain sufficient detail regarding the plaintiff’s theory of infringement “‘to provide defendants with notice of infringement’ beyond the claim language itself.”

*** (citations omitted)

This Court follows this reasoning because specificity in disclosure responds to the objectives underlying preliminary infringement and invalidity contentions: to streamline discovery and to require both parties “to crystallize their theories of the case early in litigation.” O2 Micro Int’l, Ltd. v. Monolithic Power Sys. Inc., 467 F.3d 1355, 1364-1366 (Fed. Cir. 2006) (upholding under the Federal Rules of Civil Procedure the validity of the Northern District of California’s local patent rules’ requirement that “both the plaintiff and the defendant in patent cases . . . provide early notice of their infringement and invalidity contentions”).

So the take away point from this post is that the WDWA tends to follow practices from the ND of Cal. in terms of local patent practice and in particular, the disclosures and contentions required by the local rules from the ND of Cal., as incorporated into specific cases by judges in this district.
EYSPICorder.pdf
LasnikScheduleOrderPatentCase.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.

Judge Jones Accepts Claim Interpretation "Proffer" on Motion for Summary Judgment

Judge Jones is one of our district's newest federal judges. In a recent order in Unigen Pharmaceuticals Inc. v. Walgreen Company (07-047-RAJ), he offers some new ideas for dealing with early summary judgment motions in a patent case, i.e., summary judgment motions filed before any substantive claim construction briefing. This dispute involves U.S. Patent No. 7,192,611, a patent for the "Identification of Free-B-Ring Flavanoids as Potent Cox-2 Inhibitors."

Walgreens alleges that the patent is invalid in view of United States Patent No. 5,650,433 and they filed a summary judgment motion asking the judge to dispense with complex claim interpretation and invalidate the patent under section 102(b). After noting that "determining the validity of a patent before construing its claims is improper" (citing Akamai Techs., Inc. v. Cable & Wireless Internet Servs., Inc., Inc., 344 F.3d 1186, 1195 n.4 (Fed Cir. 2003)), Judge Jones stated that "the apparent similarity between the ‘433 Patent and the patent-in-suit suggests that the court may more efficiently resolve this dispute by considering Walgreen’s motion in advance of formal claim construction." To this end, Judge Jones ordered plaintiff "to submit, within two weeks of this order, a proposed claim construction for each of the asserted claims of the patent-in-suit. Unigen should not offer argument in favor [of] its proposed claim construction, but should ensure that it submits sufficient explanation to permit the court to understand its proposed claim construction. Unigen will not be bound by its proposed claim construction except in the court’s consideration of the motions before it. Unigen may advance a different interpretation of its claims during the formal claim construction in this litigation. The
only requirement the court places upon the claim construction that Unigen submits in response to this order is that it be in good faith, consistent with the requirements of Fed. R. Civ. P. 11. The purpose of this order is to permit Unigen to propose a favorable, good-faith claim construction to avoid any prejudice that might otherwise arise from considering an invalidity motion in advance of formal claim construction."

Essentially, the order asks for a "proffer" from plaintiff concerning a "favorable, good-faith claim construction." Presumably, if Plaintiffs can offer a construction in good faith that avoids anticipation, Judge Jones will deny the motion.

Unigen asked for reconsideration of this order, arguing that the court should just delay consideration of Walgreen's motion until such time that it has an opportunity to construe the claims. Judge Jones denied this motion, stating "The court’s admonition that Plaintiff should not offer argument in support of its proposed claim construction is not a limitation on Plaintiff’s ability to advance its cause. Plaintiff should not offer argument in support of its proposed claim instruction because the court will accept Plaintiff’s proposed claim construction for purposes of resolving the summary judgment motion, and thus argument is not necessary. As stated in the prior order, the court encourages Plaintiff to provide an explanation of its proposed claim construction that will permit the court to apply that claim construction in resolving the summary judgment motion. That explanation should be sufficient to permit the court to consider the patent-in-suit through the eyes of a person of ordinary skill in the art."

This new approach to resolving early summary judgment motions raises some interesting issues. If plaintiff is unable to proffer a construction in good faith that avoids anticipation, is it proper then to dismiss its claims without formal claim construction, a result that seems to conflict with the Federal Circuit's rule in Akamai Techs., 344 F.3d at 1195 n.4? Further, what credit does this process provide to the rule that claims construction is (at least for the moment) a question of law for the Court, subject to de novo review? Is it ever proper procedure for the court to dispense with formal claim construction in order to resolve a properly filed motion for summary judgment in patent case? All open questions.

JudgeJonesORderRenotingMotionSJ.pdf

JudgeJonesMreconsider.pdf

Judge%20JonesSJ.pdf

Professor Karl Manheim of Loyola Law School Speaks to Seattle Patent Lawyers About Patent Reform Legislation

Professor Karl M. Manheim from the Loyola University Law School (LA) spoke to Seattle area patent lawyers today about pending patent reform legislation pending in both houses of Congress. Professor Manheim's talk was given at the monthly meeting of the Washington State Patent Lawyer's Association (WSPLA). Professor Manheim is the Loyola director of the Program for Law & Technology at the California Institute of Technology and Loyola Law School. The talk was very informative, covering all areas of both bills, HR 1908 and S 1145. Topics discussed included the hotly debated "first-to-file" provisions of the proposed legislation, which Professor Manheim was quick to describe as the "first inventor to file," placing emphasis on the legislation's continued requirement for filings in the name of the inventor. What was interesting to me is the fact that the original version of HR 1908 included a provision where companies could file in their own name under a representation that the inventor was under an obligation to assign. This provision was removed from HR 1908 after obvious protests from independent inventors, but according to Professor Manheim, it remains in the the Senate bill, S 1145. In fact, there appear to be many significant differences between the Senate and House versions of this legislation. Professor Manheim directed us to a chart prepared by attorneys from Foley Hoag LLP attempting to set forth, on a provision by provision basis, the differences between Senate and House patent reform legislation pending in both houses of Congress. Professor Manheim's comment on this chart was that it seemed "generally accurate," at least insofar as the legislation existed in September 2007. So far, there is no complete version of the Senate bill available and because the Senate did not establish a subcommittee on IP, discussions are being conducted within the broader Senate Judiciary Committee. Here is a link to the complete ("engrossed") version of the HR 1908 as of September 2007.