October 2009 E.D. Va. IP litigation opinion roundup, part 3
This post continues a roundup of recent Eastern District of Virginia decisions in IP cases, covering a patent summary judgment opinion and a Markman opinion.
In Rutherford Controls Int’l Corp. v. Alarm Controls Corp., Civil Action No. 3:08-cv-369, 2009 U.S. Dist. LEXIS 98762 (E.D. Va. Oct. 23, 2009), District Judge Henry E. Hudson issued an opinion rendering a decision on several summary judgment motions pending before the Court in a patent infringement action consisting of several consolidated cases. Rutherford filed a complaint for infringement against defendants Vanguard Security Engineering Corporation Ltd. and Harco Enterprise, and Vanguard and Harco filed counterclaims against Rutherford seeking declaratory judgment.
In a parallel action, Rutherford filed suit against Security Door Controls, Inc. seeking both damages for infringement and declaratory judgment. Security Door filed a counterclaim seeking declaratory judgment and damages for infringement. At issue were three patents regarding electronic door locking and unlocking mechanisms, often used to control access to buildings or closed areas. Two of the patent belonged to Rutherford and one was assigned to Security Door.
Rutherford sought summary judgment on three grounds. First, Rutherford contended it was entitled to summary judgment as a matter of law as to infringement by Vanguard’s and Harco’s devices with respect to certain claims of Rutherford’s patent. Rutherford also sought summary judgment arguing claim 3 of its patent is not invalid for either anticipation or obviousness, as contended by defendants. Finally, Rutherford sought summary judgment with respect to Security Door’s counterclaim alleging that Rutherford’s accused product did not infringe Security Door’s patent.
The Court found no infringement with respect to Rutherford’s accused product, explaining that it did not practice each and every element of Security Door’s patent, and thus, granted summary judgment on this aspect of Rutherford’s motion. As to the remaining grounds in Rutherford’s summary judgment motion, the Court found genuine issues of material fact precluding the entry of summary judgment.
Turning to Security Door’s motion, it sought summary judgment of non-infringement of any of the asserted claims of Rutherford’s patents either literally or under the doctrine of equivalents. Reviewing the claim constructions in the Markman hearing and the prior art, the Court concluded that no genuine issue of material fact existed and the limitations in the patents were not present in the accused device. As a result, the Court granted summary judgment to Security Door.
Finally, Vanguard and Harco filed motions seeking summary judgment that Rutherford’s patent was invalid on both anticipation and obviousness grounds when measured against the prior art. Alternatively, Vanguard also sought a finding of non-infringement with respect to its two accused products. While expert opinion is not always required at the summary judgment stage, here, because the comparative analysis for invalidity presented by Vanguard and Harco was not accompanied by any type of expert opinion or technical evaluation, the Court explained that it was unable “to perform the comparison necessary to determine if all elements of the prior art conform, expressly or inherently, with each and every limitation of the patents at issue.” The same reasoning held true for defendants’ obviousness argument, and as a result, summary judgment was denied on both grounds.
In Netscape Communications Corp. v. ValueClick, Inc., case no. 1:09-cv-225, 2009 U.S. Dist. LEXIS 98764 (E.D. Va. Oct. 22. 2009), District Court Judge T. S. Ellis, III, issued a Markman opinion construing terms and phrases in U.S. Patent No. 5,774,670 (the ‘670 Patent) which purports to cover the use of cookies in computer networks, including the Internet. The opinion is probably most notable for the fact that the Court construed the meaning of some fairly common technological terms.
The ‘670 Patent consists of twenty-six claims, four independent claims, and twenty-two dependent claims. Plaintiff alleged infringement of the four independent claims in the patent. The parties disputed the meaning of nine claim terms, including “http,” “http server,””http client,” “file” and “computer readable medium.” Defendants also contended that an additional eight phrases or steps within one of the claims required construction.
After a thorough review of the principles of claim construction, the Court applied the principles to resolve the disputed claim terms. Of some note, the Court construed “http” to mean “HyperText Transfer Protocol, a stateless communications protocol, which allows Web clients and Web servers to communicate,” after finding that the only dispute that the parties had was whether “http” specifically referred to “HyperText Transfer Protocol.” The Court found dispositive the patentee’s ability to act as his own lexicographer in explicitly defining claim terms noting that in the ‘670 Patent the patentee had provided a clear definition of “http” in the specification: “Web clients and Web servers communicate using a protocol called ‘HyperText Transfer Protocol’ (HTTP).” In the same manner, the Court found that the claim construction of “server” was also governed by the explicit definition in the patent, and, accordingly, construed the claim to mean “a computer that provides data” following the definition in the patent of “refer[ring] to a computer’s general role[] as . . . provider of data (the server).”
Additionally, the Court construed the common term “file” as “electronically stored or transmitted information or data” and the term “computer readable medium” as “a storage device.” How this claim construction affects the claims of the parties remains to be seen as the case continues to progress.
As the difficulty of condensing such opinions for blog purposes illustrates, patent litigation, like patent prosecution, is detailed and often technical work requiring close attention to the terms and limitations of the patent claims, including at the critical Markman and summary judgment stages of the litigation.
