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."

The True Cost of Discovery Disputes

"The parties have done their level best to avoid and undermine the purposes of the meet and confer requirements," was Judge Lasnik's opening sentence for a recent ruling granting in-part a motion to compel discovery filed by Defendants Industrial Ventilation, Inc. This is a case for patent infringement brought by Pace International who owns U.S. Patent No. 6,723,364 ("Fog Treatment Method Using a Liquid Composition For Treating Fruits And Vegetebles")

While Defendants were granted some of the relief requested, their approach was harshly criticized in the order.

"In the circumstances presented here, compliance with the Rules would have involved face-to-face or telephonic communications regarding the particular deficiencies defendants perceived in plaintiffs’ discovery responses. Instead, defendants wrote two letters identifying deficiencies, demanding supplementation, and stating that if plaintiffs “would like to discuss this matter further,” they should contact defense counsel. In the midst of a separate dispute regarding defendants’ expert report, defendants demanded that plaintiffs “provide supplementation of discovery or renewed objections by the end of the day [October 9, 2009]” or defendants would proceed with a motion to compel. Decl. of Brandon H. Pace (Dkt. # 41), Ex. 13. Plaintiffs correctly pointed out that they had already agreed to supplement their responses, that the parties were not at an impasse, and that a motion to compel in that situation was not likely to succeed. Decl. of Brandon H. Pace (Dkt. # 41), Ex. 14. Plaintiffs ultimately failed to produce any additional documents or make any further response to defendants’ discovery requests by the end of the day on October 14, 2009. Defendants filed this motion on October 15th.

There is no evidence that the parties had substantive face-to-face discussions regarding any of the issues raised in defendants’ motion. As is clear from the memoranda, the positions of the parties were unknown when defendants filed their motion, a sure sign that the requirements of Rule 37(a) have not been satisfied. 

Defendants' were not alone in their receipt of criticism


The fault is not solely on defendants’ side, however. After indicating a willingness to reevaluate their objections and supplement their responses, plaintiffs failed to act, leaving defendants in the untenable position of having to restart the meet and confer process or file a premature motion. Because both parties are responsible for the failure to comply with the meet and confer requirements of Rule 37(a), the Court will address the parties arguments with the warning that future failures may result in sanctions under General Rule 3."


This is an unfortunate reminder how discovery disputes can undermine both litigants' credibility with the presiding judge.  Many other districts have magistrate judges handle discovery disputes.  In this district, by design, the presiding judge will hear discovery disputes.  Built into this system is a strong incentive to avoid discovery disputes at all cost, for it is rare indeed that one party will emerge from the dispute untarnished by the process.

Ancora Settles Litigation with Microsoft

I posted back in April about a lawsuit that was transfered to Seattle. The lawsuit was between Ancora Technologies and Microsoft.  Recently, Ancora sent out the following press release.

Seattle, WA (PRWEB) November 13, 2009 -- Ancora Technologies today announced that a settlement has been reached in the litigation between Ancora, Miki Mullor, and Microsoft, both in respect of the patent infringement claim and Microsoft's claims against Mullor, Ancora's founder and a former Microsoft employee.

In the litigation and in reaching this settlement, all parties denied any and all liability. While the terms of the settlement are confidential, the parties have released each other from all claims of the litigation.
Miki Mullor, Ancora's founder and a former Microsoft employee said, "I am pleased with this resolution and wish my friends at Microsoft's Windows division nothing but success with Windows 7 launch."
This settlement resolves all claims between these parties.

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)

Seattle Patent Litgiation Update: July 2009

There were three patent cases filed in July. Here they are.

July 27, 2009
F5 Networks Inc v. Kemp Technologies Inc. (Judge Jones)

July 23, 2009
Sharafabadi v. University of Idaho et. al. (Judge Robart)

July 22, 2009
Avtech Corporation v. Day-Ray Products Inc. (Judge Pechman)

Th F5 case is another action to enforce US Pat. No. 6,473,802 entitled "Method and System for Storing Load Balancing information with an HTTP Cookie." You may recall that previous actions to enforce this patent were filed in 2007 against Coyote Point Systems, Inc. (Judge Pechman 2:2007cv01831), and A10 Networks Inc. (Judge Lasnik, 2:2007cv01927) Both suits settled short of discovery or claim interpretation.

The case against the U of I is also filed against WSU, U of O, and others. The case was filed pro se by inventor Soheil K. Sharafabadi, a resident of New Westminster, Canada. The patent-in-suit is US 4,980,186 entitled "Psuedoplastic Yellow Mustard Gum." This patent issued December 25, 1990 on an application that was filed August 14, 1989. According to GATT transition rules for calculating patent term of a patent that is in force on or that results from an application that was filed before the effective date of the 20-year patent term (June 8, 1995), this patent will expire, well, next Wednesday, August 14, 2009. The patent has claims drawn to "[a]n improved process of gum extraction from whole yellow mustard seed."

Claim 1 is reproduced below:

1. In a process of water extraction of gum from dried
yellow mustard seed, including the steps of
(a) treating said mustard seed with water
(b) separating the resulting water extract from said
seed, the improvement comprising
(c) said water being at a temperature in the range
from about 55'C. to about 100" C.

The third case filed by Avtech also involves a patent that was issued in 1990 and recently expired, U.S. 4,958,108, entitled "Universal Fluorescent Lamp Ballast." The plaintiff in this case is local company, Avtech Corporation, an "internationally recognized . . . leader in the design development, and manufacture of electronic systems for the aerospace industry" according to allegations in Avtech's Complaint. The defendant is California company, Day-Ray.

Court Refuses to Vacate Markman Ruling Following Settlement

In the case Unigen Pharmaceuticals v. Walgreen Co. (07-471 RAJ), which is actually a consolidation of three cases brought by plaintiff Unigen, asserting infringement of US Patent No. 7,192,611 (for more on the consolidation, click here), the parties recently settled and approached the court jointly to dismiss the case and to also vacate a prior claims construction ruling.

The claims of the '611 patent are directed to a method for treating osteoarthritis using what is known as a Free-B-Ring flavonoid, which includes baicalein. The three defendants are Walgreens, Target, and Perrigo Company of South Carolina Inc. On March 18, 2009, Judge Jones construed the claims of the '611 to require inter alia: "that the patient recognize that he has a 'COX-2 and 5-LO mediated inflammatory condition' and to take the claimed composition for treating that condition by direct inhibition of COX-2 and 5-LO." This effectively required that the "Host Must Intend to Take the Extracts to Treat a Condition as Described in the Preamble." In other words, just proving that the extracts were taken, and that they exhibited the function as claimed, was not enough to show direct infringement. The court further concluded that "each of the preambles of the disputed claims contains a limitation restricting the claimed method to enzyme inhibition of an enzyme mediated disease (e.g., osteoarthritis in ‘611 Claims 1 and 8), condition (e.g., inflammatory condition in ‘868 Claims 1 and 4), or physical limitation (e.g., limited physical function, flexibility, and mobility in ‘611 Claim 15)."

In his order refusing to vacate the Markman ruling, Judge Jones concluded as follows:

Despite begin unable to point out why vacatur would be valuable, the parties want it. It would be more accurate, of course, to say that Plaintiff wants it. No Defendant has any stake in the order being vacated, as they are no doubt shielded from future litigation over the patents-in-suit by virtue of their settlement with Plaintiff. There is something (or perhaps many somethings) in the claim construction order that Plaintiff does not like, and vacating it is apparently preferable to Plaintiff. But again, the court has no idea what underlies Plaintiff’s belief. Whether the court vacates the order or not, it remains in the public record, and has as much persuasive effect as any court or party wishes to accord it. Vacatur does not make an order disappear. See Cisco, 590 F. Supp. 2d at 831 (“[The claim construction order] is now on the internet, available to anyone with a computer.”). If vacating the claim construction order is a nugatory act, then the court declines to take it if for no other reason than it does not wish to encourage parties to file motions requesting that the court issue meaningless orders.

If, on the other hand, vacating the claim construction order has some impact, either in terms of the slight possibility that a court will give it preclusive effect, or in terms of its value as a persuasive precedent, the equities counsel against vacating it. Only Plaintiff has an interest in vacating the order, whereas a larger set of potentially interested third parties has an interest in it as a precedent. The court’s orders “are not merely the property of private litigants and should stand unless a court concludes that the public interest would be served by a vacatur.” United States Bancorp Mortg. Co. v. Bonner Mall P'ship, 513 U.S. 18, 26 (1994) (quoting Izumi Seimitsu Kogyo Kabushiki Kaisha v. U.S. Philips Corp., 510 U.S. 27, 40 (1993)). Because “[j]udicial precedents are presumptively correct and valuable to the legal community as a whole,” id., vacating them in the service of a single litigant is generally inadvisable.

Moreover, the court cannot overlook the investment of judicial (and thus public) resources in the claim construction order. See, e.g., Tumulty v. FedEx Ground Package Sys., Inc., No. C04-1425P, 2007 U.S. Dist. LEXIS 20429 (W.D. Wash. Mar. 22, 2007) (declining to impliedly undo decision reached after intensive litigation by vacating judgment). Patent cases, perhaps more than any other genre of litigation, strain the resources of district courts. The claim construction process in particular is burdensome, as the parties almost invariably flood the court with lengthy briefs and exhibits, and the court’s analysis of disputed claim terms is labor-intensive, to say the least. In this case, the court reviewed the parties’ voluminous claim construction materials, held a Markman hearing, and issued a lengthy (by this court’s standards) claim construction order. In doing so, it diverted focus from hundreds of other cases on its docket. Vacating a claim construction order deprives the public of whatever benefit inures from the court’s investment in resolving patent cases. Zinus, Inc. v. Simmons Bedding Co., No. C 07-3012PVT, 2008 U.S. Dist. LEXIS 33359, at *3-6 (N. D. Cal. Apr. 23, 2008) (declining to vacate claim construction order). As the Zinus court bluntly put it: The public paid for this use of court resources through its tax dollars. Vacatur would render that expenditure a waste, and the parties cite no public interest that would be served by vacatur which would justify the waste of public funds.
Id. at *6.

Finally, the court’s declining to vacate its order will not discourage settlement. It will not discourage settlement in this case because the parties’ settlement is not conditioned on vacatur. As to other litigants, vacating the claim construction order would set a dangerous precedent. This court is not a place for a patent holder to “test drive” its patent. A patent holder who asserts its patent and proceeds to claim construction must be prepared for the possibility of an unfavorable construction, and must not believe that vacatur will serve as its get-out-of-jail-free card. Otherwise, there is nothing to discourage a patent holder from refusing to settle questionable patent claims prior to the expensive claim construction process. Id. at *5 (citing United States Bancorp, 513 U.S. at 28). Indeed, in this case, the parties filed numerous motions before claim construction, leading to several other interlocutory orders. The prospect of a claim construction that will not be erased at the request of the parties can only discourage unnecessary litigation.

For all of these reasons, the court finds that the equities weigh against vacating its claim construction order. The court therefore DENIES the parties’ motion to vacate

Unigen%20Motion%20to%20Vacate%20Markman%20Ruling.pdfUnigen%20Order%20Denying%20M%20Vacate%20Markman.pdf

ADC v. Nintendo, Microsoft, and Sony Stayed Pending Reexamination

ADC Technology Inc, a Japanese corporation that owns several gaming patents related generally to music/karaoke-style video games, filed suit last October in Seattle against Nintendo, Microsoft, and Sony. The patents in suit include:

U.S. Patent 5,775,995, titled "Interactive Communication System for
Communicating Video” filed May 3, 1996 and issued July 7, 1998; U.S. Patent 6,193,520, titled “Interactive Communication System for Communicating Video Game and Karaoke Software” filed July 2, 1998 and issued February 27, 2001; U.S. Patent 6,488,508, titled “Interactive Communication System for Communicating Video Game and Karaoke Software” filed December 8, 2000 and issued December 3, 2002; U.S. Patent 6,702,585, titled “Interactive Communication System for Communicating Video Game and Karaoke Software” filed December 2, 2002 and issued March 9, 2004 (copy attached as Exhibit D); U.S. Patent 6,875,021, titled “Interactive Communication System for Communicating Video Game and Karaoke Software” filed November 14, 2003 and issued April 5, 2005.

ADC alleged that Nintendo's Wii, Sony's PS3, and Microsoft's Xbox 360 infringed one or more of the above-listed patents.

Led primarily by Nintendo, all three defendants came out swinging in their answer alleging invalidity, non infringement and inequitable conduct. Nintendo's pleading was particularly noteworthy, over 145 pages of allegations describing invalidity and inequitable conduct.

Last week, Judge Martinez agreed to stay the litigation in view of several petitions for reexamination in various staged of pendency before the USPTO. The parties stipulated to the stay.

Cognex Can't Seek Early Summary Judgment in Bar-Code Reader Case

In this suit involving bar-code reader technology, Renton-based Microscan asserts US Patent No. 6,105,869 against Cognex, an international company with US headquaters in Massachusettes. In its Complaint, Microscan alleges that Cognex has been and is infringing at least claims 1, 7, 12 and 16 of the ’869 patent by manufacturing, using, selling and/or offering for sale at least its DataMan 100X, DataMan 100Q and DataMan 700 reader products.

After denying these allegations in its answer, Cognex moved for summary judgment. In its motion for summary judgment, Cognex argued that "the evidence shows that there can be no genuine dispute that an express limitation in each of claims 1, 7, and 12 of the ’869 patent, regarding the arrangement of illumination sources in the claimed device, is not satisfied in the Cognex Accused Readers, either literally or under the doctrine of equivalents."

In a minute order, Judge Martinez struck the motion, finding that it implicated claim construction and therefore would not be decided prior to a Markman hearing.

This is yet another reminder that early summary judgment motions in this District must be accompanied by a motion for leave of court, explaining why the motion does not implicate claim construction issues, or if it does, why it is appropriate to hear the motion early.

Fluke Files Declaratory Judgment Action Against Competitor

Local manufacturer of electronic test tools (among other products in the largely "wired" electronics space reminiscent of last century), Fluke Products, filed suit seeking a declaratory judgment that certain Modular Telephone Plugs do not infringe U.S. Patent No. 5,562,475, allegedly owned by Aines Manufacturing Corp. of Ronkonkoma, NY. Fluke also alleges that the '475 patent is invalid.

As basis for asserting DJ jurisdiction, the complaint asserts that the president of Aines, Joseph Kern, Jr., sent a letter to Fluke in April 2009, threatening infringement and saying that he "will do whatever is necessary to protect the Aines Patent and recover damages." The complaint, filed by Ryan McBrayer at Perkins Coie, is attached below.

FlukeAinesDJComplaint.pdf

Amazon.com Strikes Back at Discovery Communications

Amazon.com asserted three patents against Discovery Communications, owner of the well known cable TV brand, the Discovery Channel, as well as other goods and services sold under the Discovery name and mark. The patents-in-suit are U.S. Nos. 6,006,225 ("Refining Search Queries by Suggestion of Correlated Terms from prior Searches"); 6,169,986 ("System and method for Refining Search Queries"); 6,266,649 ("Collaborative Recommendations Using Item-to-Item Similarity Mappings"); and 6,317,722 ("Use of Electronic Shopping Carts to Generate Personal Recommendations") All patents are asserted against Discovery through its use of the Discovery Store website.

In March, Amazon was sued by Discovery Communications in the District of Delaware under U.S. Patent No. 7,298,851 ("Electronic Book Security and Copyright Protection System"), a patent that, according to Discovery, covers Amazon's popular Kindle e-book product.

In a statement, Joseph A. LaSala, Jr., General Counsel of Discovery Communications, said: "The Kindle and Kindle 2 are important and popular content delivery systems. We believe they infringe our intellectual property rights, and that we are entitled to fair compensation. Legal action is not something Discovery takes lightly. Our tradition as an inventive company has produced considerable intellectual property assets for our shareholders, and today's infringement litigation is part of our effort to protect and defend those assets."

Amazon%20Compl%20%28WDWA%20Disc%20Comm%29.pdfAmazon%20%28Disc%20Comm%20Complt%2C%20DE%29.pdf

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

Fees Denied to K2 in Short Fat Ski Case

The case is Paul N. Nelson v. K2 Inc., Cause No. C07-1660RSL. My previous posts, explain that plaintiff Nelson lost his priority date claimed in U.S. Patent No. 5,603,522 on written description grounds, and then lost summary judgment on his invalidity defense based on allegedly "experimental sales." K2 moved for attorneys fees. In an order denying fees, Judge Lasnik reasoned as follows:

"Prior to commencing this litigation, plaintiff was under no obligation to accept defendant’s (or Volant’s) opinion regarding the validity of United States Patent No. 5,603,522 (the ‘522 patent). Plaintiff had successfully marketed and licensed the invention to a number of sophisticated entities, including K2, and had always maintained that the ‘522 patent was entitled to its earliest claimed priority date. Determining the correct priority date required the Court to evaluate the range and "blaze mark" cases and to consider the policy implications of requiring too much or too little specificity from an inventor. Plaintiff was entitled to a judicial determination of this important issue and was not required to abandon the ‘522 patent simply because his competitors challenged its validity. Because the lawsuit was not baseless or frivolous at its inception, plaintiff’s prosecution of his claims does not justify an award of attorney’s fees under 35 U.S.C. § 285."

Judge Lasnik went on to explain that "the closer question" was whether the prosecution of the case since the first SJ order on written description grounds, October 15, 2008, should be characterized as "exceptional." This issue arose because at oral argument, plaintiff’s counsel apparently stated "we’re out of here . . . we lose" if the Court granted K2's first SJ motion.

Attempting to explain these statements, plaintiffs presented evidence regarding settlement negotiations between the parties, arguing that the fees defendants incurred after the Court’s priority date ruling resulted from K2's own "strategic choices." This evidence was called into question by declarations submitted by K2.

Explaining that "[f]ee disputes should not devolve into mini-trials," Judge Lasnik denied K2's motion, noting that "[i]t is clear from either version of events that plaintiff took significant, albeit unsuccessful, steps to resolve this case in an appropriate and timely manner."

Indeed, plaintiff offered a "walk-away" settlement within days of receiving the Court’s priority date ruling. This was rejected by K2 because they believed the settlement should come with a payment of attorneys fees.

Noting further that plaintiff's experimental use defense was "not well supported," Judge Lasnik said that the weak defense could not serve as basis for fees where "defendants opted to continue the litigation" following the "walk away" proposal.

This is a reminder that continuing litigation purely for the recovery of attorneys fees is almost always a bad idea. The better route is to simply accept your hard-fought victory and move on. After all, this is America, where the default rule is that each party should bear their own attorneys fees, win, lose, or draw.nelsonK2FeeOrder.pdf

Seattle Patent Litigation Update: May 2009

What recession? Seattle patent cases exploded during the months of February, March and April 2009 (list included in this post). Note that I've done something a little different for this post, I've included the patent number and the name of the plaintiff's lawyer and law firm.

While the number of cases increased over the last few months, most of these cases remain idle, without even an appearance by counsel for the Defendant(s).

One case that you've all no doubt heard about, was Microsoft's filing against TomTom over navigation devices and software. I posted something about that case when it was first filed. That case settled quickly under mostly confidential terms, putting to rest a year's worth of squabbling between the two companies. Both companies had sued the other, claiming patent infringement. Under the terms of a five-year agreement, Microsoft said in a public statement that TomTom will pay it for use of the eight car navigation and file management system patents asserted in its ITC and Seattle case, while Microsoft will be able to use the four patents included in the TomTom countersuit without any payment to TomTom.

Another interesting case on this list, is Ancora Technologies Inc v. Toshiba America Information Systems Inc et al., Cause No., 2:2009cv00270. Pending before Judge Pechman, this case involves claims asserting U.S. Patent No. 6,411,941, for a "method of restricting software operation with a license limitation." Did I hear someone say In re Bilski? We'll be watching this one closely. It was transferred from the Central District of California. Very capable lawyers on both sides, so this will be a fun one to follow.

An interesting side story to this case is that Ancora initially filed against Dell Inc., Hewlett-Packard Co. and Toshiba Corp.’s Toshiba America Information Systems unit, asserting claims that all defendants' use of Microsoft’s technology infringed the '941 patent. Microsoft filed to intervene as a defendant in the case in September. And this started accusations that Ancora's Chief Executive Officer, Miki Mullor, landed a job with Microsoft under false pretenses and gained access to confidential data. Apparently, Mullor applied for a job at Microsoft in October 2005, saying he was a former Ancora employee and that the company had gone out of business, according to a complaint filed Jan. 22 in state court in Seattle. According to Microsoft, Mullor concealed that Sammamish, Washington-based Ancora had accused Microsoft in June of infringing a 2002 patent.

Ancora responded through its attorney, Mark Cantor, saying "[t]his is simply a retaliatory lawsuit by Microsoft to get the patent case transferred to Seattle."

Retaliatory or not, it apparently worked, and the case is now here in Seattle.

Here is the list of cases filed between February 1 and April 30, 2009.

April 17, 2009

Warm Brothers Inc v. North East Hardwood Flooring Inc et al., Cause No. 3:09-cv-05223 (WA Western/Tacoma) Judge Leighton, U.S. Patent No. 6,533,185, hydronic radiant heating devices (Lawyer for patentee, Richard L. Goff)

April 16, 2009

Alpha Technologies Inc v. Ekstrom Industries Inc., Cause No. 2:2009cv00515 (WA Western/Seattle) Judge Pechman, U.S. Patent Nos. 6,428,350 and 6,443,761, (Lawyers for declaratory judgment plaintiff, Jerry Riedinger et. al., Perkins Coie).

April 10, 2009

Direct Route LLC v. Spirevision Inc et al., Cause No. 2:2009cv00486 (WA Western/Seattle) Judge Jones, U.S. Patent No. 7,467,229, method and apparatus for routing of network addresses, (Patentee’s lawyer, Duncan C. Turner, et. al., Badgley Mullins)

Ergo LLC et al v. Pacific Cycle Inc., Cause No. 2:2009cv00488 (WA Western/Seattle) Judge Robart , U.S. Patent No. 6,158,806, bicycle seat (Patentee’s attorney, Lee Burdett)

March 31, 2009

Gamakatsu USA Inc v. Matzuo America Inc., Cause No. 2:2009cv00423 (WA Western/Seattle) Judge Lasnik, U.S. Patent No., 6,691,449, Fishing Hook (Lawyers for declaratory judgment plaintiff, Ross Boundy et al., Davis Wright Tremaine)

March 30, 2009

Broadband Graphics LLC v. TIBCO Software Inc., Cause No. 2:2009cv00418 (WA Western/Seattle) Judge Lasnik, U.S. Patent No. 7,013,432; 7,313,765; 7,013,431, display container cell modification in a cell based EUI (patentee’s lawyer, Paul Beattie, et al. Schwabe)

March 26, 2009

Hicks v. Riddell Inc., Cause No. 2:2009cv00400 (WA Western/Seattle) Judge Tsuchida, U.S. Patent No. 5,661,849, protective face guard for softball (patentee’s lawyers Chase Alvord, Jody Gross)

March 24, 2009

NewTech Touch-Up Systems Inc v. Front Line Ready GA LLC et al., Cause No. 3:2009cv05158 (WA Western/Tacoma) Judge Leighton, U.S Patent No. 7,320,811, method and system for paint matching and re-touching, (patentee’s lawyer, Owen Dukelow, Kolisch Hartwell).

March 23, 2009

G. Vincent Ltd. v. Dux Area Inc., Cause No. 2:2009cv00383, U.S. Patent Nos. 7,004,404, 7,234,649, (WA Western/Seattle) Judge Theiler , spray guns for paint (plaintiff’s lawyer, Amanda Beane, Perkins Coie).

March 19, 2009

Broadband Graphics LLC v. TLM Inc., Cause No. 2:2009cv00355, (WA Western/Seattle) Judge Jones, U.S. Patent No. 7,013,432; 7,313,765, display container cell modification in a cell based EUI (patentee’s lawyer, Paul Beattie, et al. Schwabe).

March 13, 2009

Randy's Ring & Pinion Service Inc v. Regal-Beloit Corporation et al., 2:2009cv00329 (WA Western/Seattle) Judge Jones, U.S. Patent Nos. 5,413,015, differential (declaratory judgment plaintiff’s lawyer, Larry Graham et al., Black Lowe & Graham).

March 11, 2009

Progressive International Corporation v. Jaxco Industries Inc., Cause No. 2:2009cv00317 (WA Western/Seattle) Judge Lasnik, U.S. Patent Nos. D548,022, food chopper blade tray, D548,025, chopper, 7,191,691, food chopper, (patentee’s lawyer, Larry Graham, et al., Black Lowe & Graham).

March 5, 2009

The Active Network Inc v. Arena Group Inc et al., Cause No. 2:2009cv00289, (WA Western/Seattle) Judge Pechman, U.S. Patent No. 6,289,348, electronic processing of membership information in an organization (patentee’s lawyer, Sarah Turner, Gordon & Rees)

February 27, 2009

Ancora Technologies Inc v. Toshiba America Information Systems Inc et al., Cause No., 2:2009cv00270 (WA Western/Seattle) Judge Pechman, U.S. Patent No. 6,411,941, Method of restricting software operation with a license limitation, (transferred from CD of Calif., Patentee’s lawyers, Brooks Kushman)

February 25, 2009

Microsoft Corporation v. TomTom NV et al., 2:2009cv00247, (WA Western/Seattle) Judge Jones, U.S. Patent Nos, 6,175,789; 7,054,745; 6,704,032; 7,117,286; 6,202,008; 5,579,517; 5,758,352; and 6,256,642, portable navigation devices and software (lawyers for patentee Adam Wichman et. al., Klarquist Sparkman and Sidley)

February 24, 2009

Knudtzon et al v. Intuit Inc., Cause No. 2:2009cv00240, (WA Western/Seattle), Judge Martinez, U.S. Patent No. 7,120,597, Computerized Accounting Systems and Methods (Lawyer for patentee, Ed Goldstein, Houston TX, local counsel, James Rogers)

February 17, 2009

Bow Jax Inc v. Sims Vibration Laboratory Inc et al., Cause No., 2:2009cv00047 (WA Eastern/Spokane) Judge Whaley, U.S. Patent No, 5,362,046; 6,684,874, bow limb dampaners (Declaratory judgment plaintiff’s lawyers, John S. Reid).

Potato Case Stays in Seattle

In the case Pace International LLC v. Industrial Ventilation, Inc., 08-1822-RSL, Judge Lasnik recently denied the Defendant's motion to transfer the case to the District of Idaho.

This case involves allegations of infringement of a patent owned by Xeda International, S.A., a French Corporation (also a plaintiff). Defendants in this case provide sprout-inhibiting products and services to potato growers and operators of potato storage facilities. Pace is based in Seattle and is the exclusive United States licensee of Xeda’s patent, U.S. 6,723,364. Defendants are all Idaho corporations. The allegedly infringing product is called Sprout Torch.

Neither party disputed jurisdiction or whether the action could properly be brought in either district (Washington or Idaho), so the Court's decision involved a classic application of the forum non conveniens doctrine.

In denying the motion, Judge Lasnik reasoned as follows:

1. Location of Relevant Events

The initial distribution of 1,4Group’s allegedly infringing product, Sprout Torch,
occurred in Idaho. IVI, a customer of 1,4Group, has offices in both Idaho and the Eastern District of Washington from which it has sold Sprout Torch. Defendants deny that they have ever sold products “that contain eugenol in Western Washington.” Motion at 2-3. Because the focus of this litigation is the allegedly infringing conduct of defendants, the “hub of activity” is where defendants performed the patented process. See Amazon.com v. Cendant Corp., 404 F. Supp.2d 1256, 1260 (W.D. Wash. 2005). In this case, both Idaho and the Eastern District of Washington saw accused activity, with a preponderance of the relevant events occurring in, or directed from, Idaho.

There are, however, other allegations and claims involved in this litigation which arose, at least in part, in the Western District of Washington. Plaintiffs allege that defendants’ conduct was willful because they gave notice of the alleged infringement more than three years before this suit was filed. Defendants, for their part, have asserted that one or more of the claims of Xeda’s patent are invalid under 35 U.S.C. §§ 102, 103, and/or 112. Although the exact nature of this challenge is unclear, some of the statutory counterclaims, such as the § 103(b) “on-sale” bar, would likely involve events that occurred in the Western District of Washington.
Overall, the Court finds that this factor weighs in favor of a transfer to Idaho, despite the fact that relevant events occurred in all three judicial districts under consideration.

2. Familiarity with Governing Law

Only federal claims are asserted in this litigation. This consideration is therefore
neutral.

3. Plaintiffs’ Choice of Forum

This factor is generally given great weight: there is a presumption that plaintiff’s
choice of forum will not be disturbed absent a strong showing that the convenience of the parties and/or the interests of justice warrant a transfer. Tuazon v. R.J. Reynolds Tobacco Co., 433 F.3d 1163, 1180 (9th Cir. 2006). Plaintiff Pace International has its principal place of business in this forum and a significant interest in having this dispute resolved here. Plaintiffs’ choice of forum is therefore entitled to significant weight and favors the Western District of Washington.

4. Parties’ Contacts with the Forum

Plaintiff Pace International, the exclusive licensee of Xeda’s patent in the United
States, is based in Seattle. Xeda is a French corporation and defendants are Idaho corporations. Although defendants have no offices in the Western District of Washington, their carefully crafted declarations imply that they sell goods and services to customers here. On the whole, the balance of contacts is fairly even: this consideration is neutral.

5. Contacts Relevant to this Dispute

For the reasons set forth in section 1, this factor weighs in favor of a transfer to
Idaho.

6. Cost of Litigation

The Court has no information regarding the comparative costs of litigation in
Idaho, the Eastern District of Washington, and the Western District of Washington. Defendants have failed to show that this consideration favors transfer.

7. Availability of Compulsory Process

Defendants have identified a number of witnesses in Idaho and the Eastern District
of Washington who would testify regarding the process used to inhibit sprout growth and possible damages. Motion at 6-7. Contrary to defendants’ unsupported assertion, some of these witnesses are subject to the subpoena power of this Court. Trial subpoenas may issue under Rule 45 to a party and a party’s officers, including Frank Bushman and Jerry Bartels. The Court also has discretion to compel the attendance of witnesses who reside, work, or regularly transact business in Washington, including IVI’s employees in Pasco, Washington. See Rule 45(c)(3)(A)(ii) and Rule 45(c)(3)(B)(iii). The Court is willing to assume that some of the Idaho witnesses do not regularly transact business in Washington and cannot, therefore, be compelled
to attend trial under Rule 45. Nevertheless, a transfer of venue to Idaho would simply change the group of witnesses over whom the court lacks subpoena power: witnesses in Seattle and Pasco fall outside the 100 mile reach of the federal courthouses in Boise, Couer d’Alene, Pocatello, and Moscow. This consideration is neutral.

8. Access to Sources of Proof

Convenience of witnesses is a key consideration in the § 1404(a) analysis. See,
e.g., 15 Charles Alan Wright, et al., Federal Practice and Procedure § 3851, at 415 (2d ed. 1986). Unfortunately, the witnesses in this case are spread across three judicial districts. The choice of one venue will necessarily inconvenience the witnesses in the other two. Because plaintiffs have not identified individuals who are likely to testify in this matter, the Court will assume that there are more witnesses in Idaho, the headquarters of both defendants, than there are in the Eastern District of Washington or the Western District of Washington. The documents that will be relevant to this litigation are concentrated in France, Seattle, Boise, and Pasco. Although the advent of electronic discovery has reduced the burdens associated with actually producing documents to an opposing party, the culling of the party’s files and, if warranted, the initial selection process are more easily accomplished where the documents are stored. Because two of the named parties are headquartered in Idaho and the focus of this litigation is defendants’ conduct, the Court assumes that more relevant documents will be found in the District of Idaho than in either of the Washington districts. This consideration weighs in favor of a transfer to Idaho.

9. Related Litigation

Neither party has identified pending litigation related to Xeda’s patent. This
consideration is neutral.

10. Relative Congestion

According to the most recent reports regarding the Judicial Business of the United
States Courts, during the twelve-month period ending September 30, 2008, the median time interval from filing a civil case to disposition was 7.1 months in the Western District of Washington, 8.1 months in the Eastern District of Washington, and 11.0 months in the District of Idaho. See http://www.uscourts.gov/judbus2008/contents.cfm, Table C-5. The Eastern District of Washington and the District of Idaho also have significantly higher percentages of cases pending for three years or more. See http://www.uscourts.gov/judbus2008/contents.cfm, Table C-6. To the extent that these statistics accurately measure congestion (which is debatable), this district has a clear advantage.

11. Public Interest in Local Adjudication

Both the District of Idaho and the Western District of Washington have an interest
in adjudicating the commercial rights and obligations of their corporate citizens. The Eastern District of Washington has very little interest in this dispute.

Thus, as is often the case, the convenience of defendants and their witnesses is illserved by plaintiffs’ choice of forum. Because defendants may not rely on their ties to both Idaho and the Eastern District of Washington as a counterweight to plaintiffs’ contacts with the Western District, the Court has not considered defendants’ presence in the Eastern District. (footnote omitted) Although the weight of relevant contacts favors a transfer to the District of Idaho, plaintiffs’
documents and witnesses are in this district and a transfer would simply shift, rather than eliminate, the inconvenience of litigation. Such a result would be inappropriate. See Decker Coal, 805 F.2d at 843. In addition, past performance suggests that this case will be resolved more quickly in this district. The motion to transfer is therefore DENIED.

Nintendo Prevails Over Fenner Investments in East Texas Patent Suit

Literally on the "eve of trial," Judge Leonard Davis dismissed claims for patent infringement against Nintendo that were brought by Fenner Investment in East Texas. Fenner had alleging that the Wii console and its controllers along with the GameCube infringed on a patent held by Fenner.

Judge Davis dismissed the case Monday citing that no jury trial was needed.

From Judge Davis' order:

Following the review of the parties’ oral arguments and written submissions on Defendants’ Motions for Summary Judgment and Motion for Clarification the Court concludes that the material disputes between the parties concern the meaning and scope of the patent-in-suit (“the ‘751 patent”). As such, these disputes are issues of law. O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1361 (Fed. Cir. 2008). The Court further finds that a correct construction of the claim terms in the ‘751 patent supports the arguments raised in Defendants’ Motions for Summary Judgment of Non-infringement. Therefore, Nintendo’s Motion for Summary Judgment of Non-Infringement (Docket No. 207) and Microsoft’s Motion for Summary Judgment of Non-Infringement (Docket No. 208) are GRANTED. A full opinion and final judgment will follow. The jury is dismissed. No appearance on March 17, 2009 is required.

Nintendo's senior in-house counsel, Rick Flamm, was reported as saying "We are very pleased with the court’s decision," "Nintendo has a long history of developing innovative products while respecting the intellectual property rights of others. We also vigorously defend patent lawsuits when wehttp://www.blogger.com/img/blank.gif firmly believe that we have not infringed another party’s patent, despite the risks that this policy entails. I would like to express our sincere appreciation for the tireless efforts of our legal team, which represented us so well."

That legal team included local Seattle Patent litigators from Perkins Coie, including Jerry Riedinger, Jessica Rossman, Michael D. Broaddus, Tyler C. Peterson, and Vincent Ajay Singh. Congratulations.

Microsoft Goes on the Offensive Against TomTom

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

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

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

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

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

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

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

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

From Judge Zilly's order:

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

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

Implicit Networks Case Stayed Pending Reexamination

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

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

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

From Judge Robart's order:

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

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

K2 Wins Summary Judgment in Wide Short Ski Case

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

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

From Judge Lasnik's order:

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

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

Seattle Patent Litigation Update January 2009

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

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

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

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

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

Court Hears Arguments for Summary Judgment in Surgical Trainer Patent Case

Judge Zilly heard arguments recently on a pending motion for summary judgment in a case brought by Simulab Corp. involving U.S. Patent No. 6,780,016 for a Human Surgical Trainer and Methods for Training. The accused infringer is Synbone AG, a Swiss company.

A claims construction order was issued by the court back in September after the parties agreed no Markman hearing was necessary. The claims asserted by Simulab are 1, 2, 3, 4, 37, and 43. The three independent claims are 1, 37, and 43. Eight claim terms for the three independent claims were in dispute in the briefing leading up to the court's construction. All but one of these terms appear in claim 37.

Two claim terms in particular will play a major role in the pending motion for summary judgment, which was filed by the Defendant, those terms are "composite layer" and "elastomeric layer,"

From Judge Zilly's claims construction:

Despite having suggested specific elastomers as preferred materials, plaintiff seeks to escape the limitations of the technical definition by pointing to the inventor’s use of the adjective form “elastomeric” rather than the noun “elastomer.” Plaintiff contends that the suffix “ic” is expansive, resulting in a meaning of “like elastomers.” Although the suffix “ic” does transform a noun into an adjective with a general meaning of “having the character or form of” or “being,” as in “panoramic” or “rhombic,” see Webster’s at 1119, plaintiff’s argument is essentially circular. Plaintiff’s interpretation merely informs that the material must be similar to an elastomer; it does not define the properties necessary for a material to be considered elastomeric. As lexicographer, the patentee had the unfettered ability to choose among a variety of terms to express the invention and, in this case, the inventor could have used alternative adjectives like “polymeric” or “thermoplastic,” which appear in other portions of the specification. See Col. 9 at 46-47, Col. 10 at 21-22, Col. 10 at 55-56, Exh. 1 to Prehearing Statement (docket no. 16-3). “Polymeric” has a fairly generic definition, namely “made of repeating subunits,” while the related word “polymer” means a substance “made of giant molecules formed by the union of simple molecules.” McGraw-Hill at 1635. A “thermoplastic” is a “polymeric material with a linear macromolecular structure that will repeatedly soften when heated and harden when cooled; for example, styrene, acrylics, polyethylenes, vinyls, nylons, and fluorocarbons.” McGraw-Hill at 2137.

***

In contrast, plaintiff argues that the elastic property of the material is not relevant because the elastomeric layer is combined with a fibrous layer to form a composite layer, which is not required to stretch. Plaintiff’s contention lacks merit. As indicated in the prosecution history, a necessary feature of the surgical trainer invention is mimicking the resistance to cutting exhibited by actual human tissue. See Amendment & Request for Reconsideration at 15 (docket no. 16-5). Thus, the Court must ascribe significant importance to the patentee’s selection of the
term “elastomeric” as describing a class of materials uniquely suited to the task of providing a realistic response to incision or dissection. Because plaintiff has offered no evidence to the contrary, the Court assumes that this realistic response is due in substantial part to the material’s capacity to expand linearly and retract to its original size. Whether the realistic response can be achieved, however, with a substance that stretches less or rebounds slower than a material meeting the specialized definition of an elastomer remains unclear. The Court therefore declines
at this time to impose the technical requirements proposed by defendant, and instead interprets the term “elastomeric layer” to mean “a layer formed of a material that is capable of recovering size and shape after deformation.” See Webster’s at 730.

The Court struck all pre-trial dates until a decision could be reached with respect to Defendant's motion. The trial and related pre-trial dates will be reinstated "if appropriate" following a decision on this motion.

Simulab%20Claims%20Construction.pdf

Plyboo Claims Construction Order Issued

Judge Leighton (Tacoma) recently construed the claim terms of U.S. Patent No. 5,543,197, a patent including claims for "parallel, randomly stacked, stranded, laminated bamboo beams and boards." According to the order, the term "beam" as used in the claims is not necessarily limited to something of sufficient size and strength to serve as a structural support. Further, the term "random orientation" as used in the claims means "that the bamboo segments and stocks used to construct the bamboo beam are not placed in an orderly or uniform fashion; they do not have a top or a bottom, or a front or a back. Instead, they are placed at random. As used in the ‘197 patent, the term also requires that the generally parallel bamboo segments have random, not uniform, lengths, and are staggered or lapped along the length of the beam."
teragren%20claims%20const.pdf

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