Emory Univ. et al. v. Nova Biogenetics, Inc., et al., Case No. 1:06-cv-00141 (N.D. Ga. July 15, 2008) (Thrash, Jr., J.)
Judge Thrash granted (1) Plaintiffs’ motion for summary judgment on Defendant Nova Biogenetics, Inc.’s (Nova’s) counterclaims of invalidity and unenforceability and (2) Plaintiffs' motion for summary judgment that Defendant Nova infringed the patents-in-suit. Nova has had no counsel of record since its attorney withdrew from the case in January 2007, did not file any invalidity contentions or respond to Plaintiffs' infringement contentions under the Court’s Local Patent Rules, and did not respond to Plaintiffs' summary judgment motions. Finding no question of material fact as to the validity, enforceability, and infringement of the patents, the Court granted Plaintiffs' motions and entered a permanent injunction against the Defendant.
Tuesday, August 19, 2008
New Northern District of Georgia Patent Cases
- Data:)Comm Elec., Inc. v. Elec. Custom Distrib., Inc., Case No. 1:08-cv-02630 (N.D. Ga. Aug. 15, 2008) (Batten, J.) - Patent Infringement Suit Involving U.S. Patent No. 7,390,964 (Wall Plate with Integral Nose for Electrical Cable). Plaintiff is represented by Thomas Kayden Horstemeyer & Risley of Atlanta.
- Igbinadolor v. TiVo Inc., Sony Corp., Philips Magnavox/Philips Elec., Clarion Corp. of Am., & JVC Am, Case No. 1:08-cv-02580 (N.D. Ga. Aug. 12, 2008) (Story, J.) - Patent Infringement Suit Involving U.S. Patent No. 6,799,196 (On-Demand Data Streaming Parceling). Plaintiff is proceeding pro se.
- Southwire Co. v. Cerro Wire Inc., Case No. 3:08-cv-00092 (N.D. Ga. Aug. 12, 2008) (Camp, J.) - Patent Infringement Suit Involving U.S. Patent No. 7,411,129 (Electrical Cable Having Surface With Reduced Coefficient of Friction). Plaintiff Southwire Company is represented by Alston & Bird, LLP of Atlanta.
Claim Construction Order
CBT Flint Partners, LLC v. Return Path, Inc. et al., Case No. 1:07-cv-01822 (N.D. Ga. July 10, 2008) (Thrash, Jr., J.)
Judge Thrash construed the claims of two patents relating to a method and system for hindering the proliferation of unsolicited email messages (i.e., “spam”).
Computer Implemented Means-Plus-Function Limitation Must be Supported in Specification by Specific Algorithm
Notably, the Court found that one of the asserted claims was invalid for indefiniteness and thus not amenable to claim construction. In particular, the Court found that the patent specification failed to disclose sufficient structure to support the following means-plus-function limitation: “means . . . for detecting an indication or an origin of an electronic mail communication . . . and for comparing the indication to an authorization list.” According to the Court, the structure identified in the specification that performs these claimed functions was “a computer or multiple computers in communication with each other.”
The Federal Circuit has established that the corresponding structure of a computer-implemented means-plus-function term is the algorithm for performing the function that is identified in the specification and equivalents. See WMS Gaming, Inc. v Int’l Game Tech., 184 F.3d 1339 (Fed. Cir. 1999) and Harris Corp. v. Ericsson Inc., 417 F.3d 1241 (Fed. Cir. 2005). More recently, the Federal Circuit stated that “this court has consistently required that the structure disclosed in the specification be more than simply a general purpose computer or microprocessor.” See Aristocrat Techs. Australia v. Int'l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008) (affirming a finding of invalidity for failure to disclose any structure, i.e., any algorithm, to support a software means-plus-function claim).
Quoting extensively from Aristocrat, Judge Trash concluded that in order to claim the recited means “for detecting” and “for comparing,” the Plaintiff “must have disclosed the algorithm.” Finding that the specification disclosed no algorithm, but only general purpose computers as corresponding structure, the Court held that the asserted claim was invalid for indefiniteness.
Judge Thrash construed the claims of two patents relating to a method and system for hindering the proliferation of unsolicited email messages (i.e., “spam”).
Computer Implemented Means-Plus-Function Limitation Must be Supported in Specification by Specific Algorithm
Notably, the Court found that one of the asserted claims was invalid for indefiniteness and thus not amenable to claim construction. In particular, the Court found that the patent specification failed to disclose sufficient structure to support the following means-plus-function limitation: “means . . . for detecting an indication or an origin of an electronic mail communication . . . and for comparing the indication to an authorization list.” According to the Court, the structure identified in the specification that performs these claimed functions was “a computer or multiple computers in communication with each other.”
The Federal Circuit has established that the corresponding structure of a computer-implemented means-plus-function term is the algorithm for performing the function that is identified in the specification and equivalents. See WMS Gaming, Inc. v Int’l Game Tech., 184 F.3d 1339 (Fed. Cir. 1999) and Harris Corp. v. Ericsson Inc., 417 F.3d 1241 (Fed. Cir. 2005). More recently, the Federal Circuit stated that “this court has consistently required that the structure disclosed in the specification be more than simply a general purpose computer or microprocessor.” See Aristocrat Techs. Australia v. Int'l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008) (affirming a finding of invalidity for failure to disclose any structure, i.e., any algorithm, to support a software means-plus-function claim).
Quoting extensively from Aristocrat, Judge Trash concluded that in order to claim the recited means “for detecting” and “for comparing,” the Plaintiff “must have disclosed the algorithm.” Finding that the specification disclosed no algorithm, but only general purpose computers as corresponding structure, the Court held that the asserted claim was invalid for indefiniteness.
Monday, August 18, 2008
Motion for Summary Judgment of Invalidity Granted Due to Indefiniteness
CBT Flint Partners, LLC v. Return Path, Inc. et al., Case No. 1:07-cv-01822 (N.D. Ga. July 11, 2008) (Thrash, Jr., J.)
Claim 13 of U.S. Patent No. 6,587,550 includes a drafting error. The claim recites, in relevant part, that “the computer [is] programmed to detect analyze the electronic mail communication sent” (emphasis added). Defendants’ filed a motion for summary judgment of invalidity, arguing that the claim is indefinite. In particular, the Defendants contended that the claim is ambiguous because there are five reasonable ways to correct the error: (1) delete the word “detect,” (2) delete the word “analyze,” (3) add the word “and” between the words, (4) add the word “or” between the word, and (5) add the phrase “and/or” between the words. The Plaintiff argued that inserting the word “and” between the words “detect analyze” is the only reasonable correction.
District Court May Correct Drafting Error in Some Circumstances: The parties did not dispute that the claim has a drafting error. Thus, the question for the Court was whether it could correct the error. The Federal Circuit has explained that a district court can correct an error in a patent claim if “(1) the correction is not subject to reasonable debate based on consideration of the claim language and the specification and (2) the prosecution history does not suggest a different interpretation of the claims.” Novo Indus., L.P., v. Micro Molds Corp., 350 F.3d 1348, 1354 (Fed. Cir. 2003).
But Not Where the Court Must Guess at the Claim's Intended Meaning: Citing deposition testimony of a co-inventor who stated that “I think that maybe I meant detect and analyze or I meant detect and meant to delete analyze or I meant analyze and meant to delete detect,” Judge Thrash concluded that the Court had no authority to correct the error and granted the Defendants’ motion:
Claim 13 of U.S. Patent No. 6,587,550 includes a drafting error. The claim recites, in relevant part, that “the computer [is] programmed to detect analyze the electronic mail communication sent” (emphasis added). Defendants’ filed a motion for summary judgment of invalidity, arguing that the claim is indefinite. In particular, the Defendants contended that the claim is ambiguous because there are five reasonable ways to correct the error: (1) delete the word “detect,” (2) delete the word “analyze,” (3) add the word “and” between the words, (4) add the word “or” between the word, and (5) add the phrase “and/or” between the words. The Plaintiff argued that inserting the word “and” between the words “detect analyze” is the only reasonable correction.
District Court May Correct Drafting Error in Some Circumstances: The parties did not dispute that the claim has a drafting error. Thus, the question for the Court was whether it could correct the error. The Federal Circuit has explained that a district court can correct an error in a patent claim if “(1) the correction is not subject to reasonable debate based on consideration of the claim language and the specification and (2) the prosecution history does not suggest a different interpretation of the claims.” Novo Indus., L.P., v. Micro Molds Corp., 350 F.3d 1348, 1354 (Fed. Cir. 2003).
But Not Where the Court Must Guess at the Claim's Intended Meaning: Citing deposition testimony of a co-inventor who stated that “I think that maybe I meant detect and analyze or I meant detect and meant to delete analyze or I meant analyze and meant to delete detect,” Judge Thrash concluded that the Court had no authority to correct the error and granted the Defendants’ motion:
If the inventor and lawyer who drafted the patent is left to guess at what he meant, the Court is certainly in no better position. The appropriate correction is subject to reasonable debate based on consideration of the claim language and the specification. The prosecution history is silent as to what was intended. Following the clear mandate of Novo Industries, this Court is not authorized to correct the drafting error. Therefore, claim 13 is invalid for indefiniteness in its present form.
Friday, August 1, 2008
New Northern District of Georgia Patent Cases
July 31, 2008: Wisefame International Ltd. and IFM International, Inc. v. FKA Distributing Co. (d/b/a HoMedics-U.S.A, Inc.), Case No. 1:08-cv-02468 (N.D. Ga.) (Duffey, Jr., J.) - Declaratory Judgment Suit Involving U.S. Patent No. 7,128,721 (Portable Body Massager). Plaintiffs are represented by Morris Manning & Martin of Atlanta. This case is related to a previously-filed suit among the same parties wherein the Plaintiffs seek a correction of inventorship for the ‘721 patent. (See Wisefame International Ltd. and IFM International Ltd. v. FKA Distributing Co. (d/b/a Homedics-USA, Inc.), Case No. 1:08-cv-00641 (N.D. Ga. filed Feb. 26, 2008) (Duffey, Jr., J.)).
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