Claim Construction Order

Calmedica LLC v. Best Vascular, Inc., et al., Case No. 1:04-cv-02646 (N.D. Ga. June 18, 2008) (Story, J.)

Judge Story construed the claims of two patents relating to a method and apparatus for preventing restenosis (i.e., the subsequent narrowing) of a blood vessel after angioplasty, a procedure for widening a region of a blood vessel that has been narrowed (stenosed) by the buildup of atherosclerotic plaque.

The Court construed a number of disputed terms and phrases. Notably, as he has done in at least one previous case, Judge Story adopted his own constructions for a couple of the disputed terms. Specifically, the Court rejected both parties’ proposed constructions of the claim phrase “wherein the radioactive dose is incorporated into a liquid for delivery” in favor of its own, and found that the appropriate construction of the claim term “operatively connected” was a combination of the parties’ proposed constructions.

Also of interest, the Court held that the term “positioner” is a means-plus-function clause despite the presumption against means-plus-function treatment because the word “means” was not used. In so holding, the Court agreed with the Defendant that “positioner” is a functional word that conveys no structure and has no well-understood structural meaning in the art. The term was not found in any of the prior art of record or in any of the inventor’s or Plaintiff’s other patents. Further, the Court rejected the Plaintiff’s argument that the prosecution history supported a broader construction. The applicant had replaced the term “positioning means” with the term “positioner” during prosecution “for improved clarity of the claims.” The Court found that because this amendment was made after the claims had been allowed over the prior art, it was not intended to change the scope of the claim and remove the clause from the purview of means-plus-function treatment.

New Northern District of Georgia Patent Cases

• June 17, 2008: Dynamic Depth, Inc. v. Alt-N-Technologies, Ltd., Case No. 1:08-cv-02031 (N.D. Ga.) (Pannell, J.) - Patent Infringement Suit Involving U.S. Patent No. 5,461,488 (Computerized Facsimile System and Method). Plaintiff Dynamic Depth, Inc. is represented by Thomas, Kayden, Horstemeyer & Risley, LLP of Atlanta.

Motion to Transfer Held in Abeyance Until Judge in First-Filed Case Determines the Appropriate Forum

Faus Group Inc. et al. v. Berry Floor N.V. et al., Case No. 1:08-cv-00315 (N.D. Ga. June 10, 2008) (Thrash, J.)

On January 11, 2008, Berry Floor and Alloc filed suit against Faus Group in the Eastern District of Wisconsin for declaratory judgments of non-infringement and invalidity. A little over two weeks later, on January 29, 2008, Faus Group filed this patent infringement action against Berry Floor and Alloc in the Northern District of Georgia. Alloc filed a motion to transfer this action to the Eastern District of Wisconsin under the “first-to-file rule,” which provides that as between competing lawsuits involving the same parties and the same issues, the lawsuit that was filed first should take precedence. Faus Group filed a similar motion in the Wisconsin case seeking to have that case transferred to this Court.

In addressing Alloc’s motion to transfer the case to Wisconsin, Judge Trash noted that trial courts have discretion to make exceptions to the first-to-file rule if the general preference for the first-filed suit is outweighed by certain factors, such as the convenience and availability of witnesses. In this situation, where there is a motion to transfer pending in the first-filed court, the Court held that the judge in the first-filed case should make the initial ruling on whether the first-to-file rule should be applied. Accordingly, Judge Trash decided that he would hold Alloc’s motion to transfer in abeyance until Judge Stadtmueller in the E.D. Wisconsin rules on Faus Group’s motion to transfer that case to the N.D. Georgia.

New Northern District of Georgia Patent Cases

• May 29, 2008: Graywire, LLC v. Ciena Corp., Cisco Systems, Inc., JDS Uniphase Corp., Newport Corp., and Palomar Technologies, Inc., No. 1:08-cv-01894 (N.D. Ga.) (Martin, J.) – Patent Infringement

NICE Systems v. Verint Americas: Following Bench Trial, NICE’s Patent Held Valid But Not Infringed

STS Software Sys. Ltd. and NICE Systems, Ltd. v. Witness Systems, Inc., No. 1:04-cv-2111 (N.D. Ga. May 23, 2008) (Story, J.)

NICE Systems Ltd. and Verint Americas Inc. (formerly Witness Systems, Inc.) are competing providers of call recording products for call centers, and have been involved in multiple patent infringement lawsuits. In the latest suit to reach a judgment, Judge Story found NICE’s U.S. Patent No. 6,871,229 valid but not infringed by Verint. The judgment was issued one week after a N.D. Ga. jury found that NICE infringed Verint’s U.S. Patent No. 6,404,857 and awarded Verint $3.3 million in damages.

The asserted claims of the ‘229 patent relate to methods for recording communication sessions that are transmitted over a packet-switched computer network. Prior to the bench trial, the Court adopted the special master’s report and recommendations on claim construction. Of particular note, the special master construed the claims to require that the method steps be performed in the order written. For example, the asserted claims were construed to require that the step of “receiving data packets” be performed prior to the step of “filtering [the] data packets.” Such a construction is contrary to the general rule that a method claim may be infringed by performing the recited steps in any order. This construction, along with the special master’s construction of the claim term “communication session,” proved important to the Court’s infringement and validity analyses.

Specifically, the Court found that the alleged “filtering” step carried out by Verint’s accused ContactStore for IP product would be performed prior to the alleged “receiving” step and thus did not fall under the claims as properly construed. Further, there was no evidence that the alleged “filtering” step was ever performed because it was an optional step made possible by third-party software and disabled by default. As for Verint’s accused ContactStore for Communication Manager and Nortel Contact Recorder products, the Court determined that the alleged “analyzing” step was not performed after the “receiving,” “filtering,” and “accepting” steps, and before the “storing” step, as required by the asserted claims. Moreover, the Court held that for these products the alleged “analyzing” step did not distinguish between “communication sessions” as that claim term is properly construed. For these and additional reasons, the Court found that Verint’s accused products did not infringe the ‘229 patent.

With regard to the invalidity claims, Verint asserted that the ‘229 patent was invalid as anticipated by each of six prior art references. The Court held that Verint failed to prove invalidity by clear and convincing evidence. Notably, the Court found that Verint failed to prove that any of the references described an operation of steps in accordance with the order of steps recited in the asserted claims. In addition, the Court found that Verint did not prove that three of the references were publicly available prior to the filing date of the ‘229 patent and qualified as a printed publication under 35 U.S.C. § 102. For these and additional reasons, the Court found in favor of NICE on the issue of validity.