October 2012 Archives

CSR v. Bandspeed: Bandspeed Loses Motion for Summary Judgment of Non-Infringement

October 31, 2012

CSR Technology, Inc. ("CSR") filed a patent infringement action against Bandspeed, Inc. ("Bandspeed") for infringement of its signal processing patents. After the district court issued its claim construction ruling, Bandspeed moved for summary judgment.

As the district court explained, "[t]he '771 and '886 patents relate to signal detection and acquisition respectively. Signal detection involves checking an incoming signal for its fit with reference signals, so as to detect the signal's identity. Signal acquisition involves sampling an incoming signal so as to acquire it."

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PB&J Software Patent Infringement Claims Dismissed with Leave to Amend for Failure to Identify a Product

October 29, 2012

PB&J Software (PB&J) filed a patent infringement action against defendant Backup Agent. PB&J is the assignee of the 7,356,535 patent (the '535 patent) and asserted that Backup Agent was infringing, inducing others to infringe and/or was contributorily infringing at least one claim of the patent by offering services and licensing software implementing what Backup Agent identified as "seed loading."

Backup Agent moved to dismiss the claim for direct infringement on the ground that PB&J failed to identify the accused product. As explained by the district court, "Defendant maintains that plaintiff failed to state a claim for direct infringement because it fails to identify the accused product. Here, plaintiff identifies infringing activities as including, but not limited to, 'offering services and licensing software implementing what BackupAgent identifies as a 'seed loading.' Defendant argues that plaintiffs pleading deprives defendant of any notice of plaintiffs claims because plaintiff fails to explain in what products, services, or documentation defendant allegedly identifies this 'seed loading.'"

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Multimedia Patent Trust Is Not Permitted to Add New Products in Final Infringement Contentions Based on Court's Claim Construction Order

October 24, 2012

On December 20, 2010, Plaintiff Multimedia Patent Trust ("MPT") filed a patent infringement action against Defendants Apple, Inc. ("Apple"), LC Electronics, Inc., LC Electronics U.S.A., Inc., and LC Electronics Mobilecomm U.S.A., Inc. (collectively "LC"), and Canon USA, Inc. and Canon, Inc. (collectively "Canon"). The complaint alleged that Defendants are liable for infringement of four patents related to video compression technology: (U.S. Patent Nos. 4,958,226 ("the '266 patent"), 5,227,878 ("the '878 patent), 5,500,678 ("the '678 patent"), and 5,136,377 ("the '377 patent") (collectively the "patents-in-suit"). After MPT served final infringement contentions, Defendants Canon, LC and Apple, Inc. ("Apple") filed motions to strike the final infringement contentions.

Canon moved to strike MPT's final infringement contentions on the ground that that the final contentions alleged, for the first time, that Canon hardware infringes the '878 Patent and that these amendments were made without leave of the district court In response, MPT argued that it was allowed to amend its contentions based on the district court's claim construction order and newly produced discovery.

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Microsoft v. Motorola: District Court Denies Motorola's Summary Judgment on Microsoft's Claim for a RAND License

October 22, 2012

Motorola moved for partial summary judgment to dismiss Microsoft's claim for a reasonable and non-discriminatory ("RAND") license agreement to be determined by the district court. As explained by the district court, "Microsoft and Motorola are both members of the Institute of Electrical and Electronics Engineers ("IEEE") and the International Telecommunication Union ("ITU"). The IEEE and ITU, neither of which are parties to the instant dispute, are international standards setting organizations. Standards setting organizations play a significant role in the technology market by allowing companies to agree on common technological standards so that all compliant products will work together. Standards lower costs by increasing product manufacturing volume, and they increase price competition by eliminating "switching costs" for consumers who desire to switch from products manufactured by one firm to those manufactured by another."

Motorola asserted that it would be inappropriate for the district court to fashion a license agreement between Microsoft and Motorola for Motorola's standard essential patents because no license agreement currently exists. The district court disagreed: "Motorola's declaration to the ITU and IEEE constitute binding agreements to license its essential patents on RAND terms, and Microsoft is a third-party beneficiary to those agreements and therefore entitled to a license of Motorola's essential patents on RAND terms. (6/6/12 Order at 13-14.) Indeed, Motorola has agreed that Microsoft is a third-party beneficiary to Motorola's assurances to license its essential patents on RAND terms. [Footnote omitted.] Nevertheless, Motorola argues, in part, that no license agreement exists between Microsoft and Motorola because Motorola's commitments to the ITU and IEEE only "bind Motorola to engage in bilateral, good-faith negotiations leading to RAND terms," but do not require Motorola to grand licenses on RAND terms. (Mot. At 18-20.) This is not what the court held in its June 6, 2012 order, and the court declines to reach that conclusion in this order. Instead, after examining the language of Motorola's agreements with the ITU and IEEE, the court held that Microsoft is entitled to a RAND license. (6/6/12 Order at 13-14.) To be clear, having previously determined that Microsoft has not repudiated or revoked this right, the court's prior holding means that Motorola must grant Microsoft a RAND license to its standard essential patents."

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Defendant's Argument That It Practiced the Prior Art Not Sufficient to Avoid Finding of Infringement on Summary Judgment

October 19, 2012

Plaintiff Gen-Probe Incorporated ("Gen-Probe") filed a patent infringement action against Becton Dickinson & Company ("Becton Dickinson") alleging infringement of its Automation and Cap patents. The Automation patents resulted from Gen-Probe's development of a single automated instrument to detect a target nucleic acid indicative of the presence of a target pathogen within a sample. The Cap patents are directed to a specimen collection vessel that allows the contents of the vessel to be sampled by an automated device.

In the patent infringement action, Gen-Probe accused Becton Dickinson of infringing claims of both the Automation and the Cap patents through the sale of the VIPER XTR and BD Max, which are Becton Dickinson's automated nucleic acid test instruments and penetrable cap products. As explained by the district court, "[t]he Automation Patents describe an automated method of nucleic acid-based testing where the automated analyzer detects the presence of a particular pathogen in a sample. Nucleic acid-based testing involves the creation of a complementary nucleotide sequence that a target pathogen will bind to through complementary base pairing. The complementary nucleotide sequence is used as a probe. The probe is introduced to a sample that may contain the target nucleic acid. If the target binds to the probe, it indicates that the target nucleic acid is present in the sample. The Automation Patents automate the steps of this process in a single instrument. The Cap Patents use a seal or seals on a collection vessel that are penetrated by a fluid transfer device. The seal or seals, in conjunction with the core structure, are intended to prevent the release of aerosols from the sample and limit contamination from fluid on the fluid transfer device after removal."

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Apple v. Samsung: Court Dissolves Injunction and Permits Sale of Samsung's Galaxy Tab 10.1

October 17, 2012

Earlier this summer, the district court enjoined Samsung from "making, using, offering to sell, or selling within the United States, or importing into the United States, Samsung's Galaxy Tab 10.1 tablet computer, and any product that is no more than colorably different from this specified product and embodies any design contained in U.S. Design Patent No. D504,889." After the injunction issued, Samsung filed a notice of appeal to the Federal Circuit. The appeal remained pending as the case proceeded to trial.

After the trial, the jury found that the Galaxy Tab 10.1 did not infringe Apple's design patent. The district court subsequently entered a judgment in favor of Apple on the jury verdict. Based on the judgment, Samsung filed a motion for the district court to dissolve the injunction and to retain the $2.6 million bond posted for the injunction. The district court denied the motion due to the pending appeal but issued an indicative ruling pursuant to Fed.R.Civ.P. 62.1 that Samsung's motion raised a substantial issue. The Federal Circuit subsequently issued a limited remand order to permit the district court to rule on the motion to dissolve.

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Chief Judge Kozinski Rules in Favor of Google Finding Street View Did not Infringe Vederi's Patents

October 15, 2012

Vederi owns several patents which cover certain methods for enabling users to navigate a geographic area visually from a device, including a personal computer. Vederi asserted that Google's Street View service, which allows users to explore geographic location by viewing street-level imagery, infringed its patents. Both parties cross moved for summary judgment on the issue of infringement.

In its summary judgment motion, Google asserted that Street View did not infringe any of Vederi's patents because each of Vederi's patents contains the limitation "depicting views of objects in the geographic area, the view being substantially elevations," which relate to the retrieved images presented to the user. During the Markman hearing, the court construed whether this term applied to curved or spherical views (Vederi's position) or just vertical or flat views (Google's position). The court adopted Google's position "because Vederi's method of taking, processing and displaying images creates only vertical flat views, not spherical ones."

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Apple v. Samsung: The Federal Circuit Frees the Galaxy Nexus from Siri's Injunctive Grip

October 12, 2012

In June 2012, the United States District Court for the Northern District of California enjoined Samsung's Galaxy Nexus smartphone because it likely infringed Apple's 8,086,604 patent (the "'604 patent") and because Apple was likely to suffer irreparable harm in the absence of an injunction. Apple prevailed at the district court level based on claim 6 of the '604 patent -- which is practiced by Siri, Apple's popular voice search companion.

Independent claim 6 is directed to an apparatus for "unified search" using heuristic modules to search multiple data storage locations. As explained by the Federal Circuit, "[u]nified search refers to the ability to access information on more than one data storage location through a single interface. For example, a device equipped with unified search allows the user to search the local memory of the device as well as the Internet by entering a single search query."

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Covenant Not to Sue Blocks Declaratory Judgment Action Seeking to Invalidate Patent

October 10, 2012

The plaintiff, Mytee Products, Inc. ("Mytee") manufactures and sells a sealing fan under the name Tradewind. Defendants Studebaker Enterprises, Inc. ("Studebaker") and Dri-Eaz Products, Inc. ("Dri-Eaz") were assigned ownership rights in the patents-in-suit, which are both entitled "Shrouded Floor Drying Fan." Another of the defendants, Skagit Northwest Holdings, Inc. ("Skagit") is in the business of manufacturing room drying fans that are considered to be covered by the patents-in-suit.

Counsel for Studebaker and Skagit sent a letter to Mytee asserting that Mytee's Tradewind fan infringes their patents. Mytee then filed a declaratory judgment action asserting that the Tradewind did not infringe the patents and that the patents were invalid. Dri-Eaz and Studebaker subsequently executed a covenant not to sue to Mytee and provided the covenant not to sue to Mytee. Defendants then filed a motion to dismiss this patent infringement action for lack of subject matter jurisdiction.

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Apple Inc. v. Samsung Electronics Co. Ltd - Apple's landslide victory over Samsung in a US District Court does not mark the end of the so called smart phone 'patent wars'

October 8, 2012

This article was first published in Vol. 12, Issue 4 of E-Commerce Law Reports and is reprinted with permission.

As the smart phone wars continue to rage across the world, the verdict in the Apple v. Samsung case is the latest battle to end, at least for now, in favor of Apple. Given Apple's victory, it is likely that Apple will continue to press its offensive throughout the globe, particularly in the United States. Even though Apple has suffered some set backs, most recently in South Korea, the victory over Samsung in the Northern District of California will spur on additional lawsuits, both in the United States and in other countries. Until Google (perhaps through Motorola) or one of the Android handset makers, such as Samsung or HTC, achieves a victory over Apple, the smart phone wars are not likely to slow anytime soon.

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Freddie Mac Proves Patent Invalid on Motion to Dismiss That Is Converted into a Summary Judgment Motion for Claiming Unpatentable Subject Matter

October 5, 2012

Graff/Ross Holdings LLP ("Graff/Ross") filed a patent infringement action against the Federal Home Loan Mortgage Corporation ("Freddie Mac") for patent infringement. Freddie Mac moved to dismiss pursuant to Fed.R.Civ.P. 12(b)(6) on the ground that the patent was invalid for claiming unpatentable subject matter. The district court referred the motion to the Magistrate Judge who recommended granting Freddie Mac's motion after converting it into a motion for summary judgment. Graff/Ross objected to the district court.

Claim 101 of the patent-in-suit provides:

A method for making a financial analysis output having a system-determine purchase price for at least one component from property in consummating a sale, the financial analysis output being made by steps including:

Converting input data, representing at lest one component from property, wherein the property is a fixed income asset, into input digital electrical signals representing the input data;

Proving a digital electrical computer system controlled by a processor electronically connected to receive said input digital electrical signals and electronically connected to an output means;

Controlling a digital electrical computer processor to manipulate electrical signals to compute a system-determined purchase price for at least once component from property in consummating a sale and corresponding purchase of the component; and

Generating the financial analysis output at said output means.

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Administrative Law Judge Denies Request to Exclude Rebuttal Witness and States That the Request Did Not Merit a Motion that Expends the Resources of the ITC and the Parties

October 3, 2012

Complainant Knowles Electronics, LLC ("Knowles") initiated an investigation with the ITC against Analog Devices, Inc. Amkor Technology, Inc. and Avnet, Inc. (collectively, the Respondents) over silicon microphone packages. During the proceeding, Knowles submitted a rebuttal witness statement from Mr. Phillip Green. The Respondents moved to exclude the rebuttal statement alleging that Mr. Green's opinion of the commercial success of the asserted claims of the patents-in-suit and the commercial success of Knowles products was outside the scope of his expertise.

According to the Administrative Law Judge, "Respondents assert Mr. Green fails to provide any evidence to support the nexus between the asserted patents and the commercial success of the Knowles MEMS products and cannot do so because he is not qualified to opine on what features resulted in their commercial success."

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AT&T, Apple and Other Defendants Win Motion to Dismiss Claims of Indirect Infringement Even Though Claims Satisfied Form 18

October 1, 2012

Garnet Digital sued AT&T, Apple and several other defendants for patent infringement and included a claim for indirect infringement. Garnet Digital accused all of the defendants of infringing U.S. Patent No. 5,379,421, which is entitled "Interactive Terminal for the Access of Remote Database Information." Garnet Digital made the same allegation against each of the defendants, as follows: "[Defendant] directly or through intermediaries, made, had made, used , imported, provided, supplied, distributed, sold, and/or offered for sale products and/or systems (including at least [Defendant's product(s)]) that infringed one or more claims of he 421 patnet, and/or induced infringement and/or contributed to the infringement of one or more of the claims of the 421 patent by its customers."

AT&T and Apple, as well a many of the other defendants, moved to dismiss the indirect infringement claims. Verizon and other defendants also moved to dismiss the patent infringement claims. Both motions were made pursuant to Fed.R.Civ.P. 12(b(6) and the AT&T, Apple motion asserted that the indirect infringement claims did not comply with Rule 8 of the Federal Rules of Civil Procedure. Verizon asserted that the direct infringement claims were insufficient because they did not identify the patent claims asserted, they failed to identify products or services and failed to identify how accused products provide the claimed functionality to perform the claimed method. Garnet Digital responded by claiming that its complaint satisfied Rule 8 and specifically Form 18.

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