Virginia IP Law : Virginia Intellectual Property Lawyer & Attorney : Troutman Sanders Law Firm : Technology & Patent Litigation

• Email This
• Print
• Comments
• Trackbacks

At the risk of focusing too much on Judge Ellis, whose opinions we recently addressed here and here, we’d like to comment on two lengthy opinions Judge Ellis issued in Netscape Comm’s Corp. v. ValueClick, Inc. on April 2 (found here and at 2010 U.S. Dist. LEXIS 32817) and April 15 (found here and at 2010 U.S. Dist. LEXIS 50234). We posted on Judge Ellis’ January 29 decision in the same case here. That opinion is also reported and can be found at 684 F.Supp.2d 699.

Netscape involved U.S. Patent No. 5,774,670, commonly called “the cookie patent.”

In his January 29 decision, Judge Ellis granted summary judgment that claim 1 of the patent was invalid under the on-sale bar of 35 U.S.C. § 102(b) as applied in Pfaff v. Wells Electronics, Inc., 525 U.S. 55 (1998). On April 2, Judge Ellis denied Netscape’s motion for reconsideration and his ruling addressed a number of interesting issues for patent litigators in the EDVA, including:

• A motion to reconsider entry of partial summary judgment is interlocutory, and so is governed by FRCP 54(d) which allows revision of a ruling “at any time,” rather than Rule 59(e) and Rule 60(b)(6), which require a showing of “extraordinary circumstances.”
• The doctrine of inherent anticipation applies in the on-sale bar context “if the natural result flowing from the operation of the process offered for sale would necessarily result in achievement of each of the claim limitations.” (emphasis in original).
• Resolving a conflict in Federal Circuit panel decisions, Judge Ellis ruled that “corroboration is required of any witness whose testimony alone is asserted to invalidate a patent, regardless of his or her level of interest.”
• The sufficiency of corroborating evidence is judged by a “rule of reason” analysis under Woodland Trust v. Flowertree Nursery, Inc., 148 F. 3d 1368 (Fed. Cir. 1998).
• The aim of the “rule of reason” analysis is to determine whether the testimony and documentary evidence provide a “coherent and convincing story.” Corroboration of every point of reduction to practice by evidence totally independent of the inventor is not required.
• Proof that an invention is “ready for patenting” based on an enabling disclosure to one “skilled in the art” does not require testimony that either the inventor or the person to whom the disclosure was made subjectively believed that an enabling disclosure had been made.

On April 15, in another summary judgment ruling, the judge addressed some common sufficiency and hearsay issues relating to prior art references. Specifically, Judge Ellis ruled:

• A scholarly paper qualifies as a prior art reference under Section 102(b) based on (1) the testimony of the paper’s author that he routinely posted his papers on one of two websites and presented the paper at a conference that occurred before the priority date; (2) a statement in the paper itself that it was presented at the conference; and (3) a web page printout from the conference that lists the paper. The judge overruled the plaintiff’s hearsay objections to the documentary evidence but required that the defendant establish that the documents met the business records hearsay exception at trial.
• The “date of invention” for purposes of determining whether a patent application qualifies as prior art under Section 102(e)(2) is the date the invention was “ready for patenting” as defined by Pfaff.
• Source code can qualify as a prior art reference under Section 102(g)(2) based on a time stamp on the source code documents, but the defendant must qualify the documents as business records under the hearsay rules at trial.
• References that do not qualify as prior art under Section 102 are inadmissible to prove the scope and content of the prior art, but they may still be admissible to show the knowledge of one of ordinary skill in the art under Section 103 if they are “contemporaneous” with the claimed invention.

Netscape was set for trial to begin on April 26, but shortly after Judge Ellis’ rulings, the parties began settlement discussions, and the case was settled and dismissed on May 6.