Eric Waltmire's Blog

Fifth Generation Computer Corp. v.  IBM, Dkt No. 2010-1201 (Fed. Cir. Jan 26, 2011) [PDF].

Fifth Generation sued IBM for alleged infringement of US patent 6,000,024, which is directed to binary tree parallel computing systems.  It  is well known that parallel computing systems attempt to increase processing speed by the use of multiple processors operating simultaneously.

The key issue in the case was how the term “root bus controller” in claims 1 and 7 should be interpreted. Claim 1 of the ‘024 patent provides:

A binary tree computer system for connection to and control by a host computer, comprising:

N bus controllers connected in a binary tree con-figuration in which each bus controller, except those at the extremes of the tree, are connected to left and right child bus controllers, where N is an integer greater than 2, one of said bus controllers being a root bus controller for connecting said binary tree connected bus controllers to said host computer;

N processing elements, one attached to each of said bus controllers;

N+1 leaf processing elements connected, two each, as right and left children to the bus controllers at the extremes of said bi-nary tree;

each of said processing elements including a microprocessor and a memory;

each of said bus controllers including, for each processing element connected thereto, a buffered interface connecting said processing element to said bus controller for transmitting instructions and data between the bus controller and the connected processing element, and means for writing information into the memory of the connected processing element without involving the microprocessor of said connected processing element.

Claims require “root bus controller” to have no parent bus controller. The court noted that patent claims function to delineate the scope of the claimed invention and give notice to the public of the patentee right, however this notice function would be undermined, the court said, if claims were construed so as to render “characteristics specifically described in those claims as superfluous.” The appellate court agreed with the trial court that root bus controller is necessarily the link between the binary tree of bus controllers and the host computer. Therefore the root bus controller is the “the bus controller at the highest order position of the binary tree computer system that connects the binary tree to the host computer and which has no parent bus controller.”

Fifth-generation argued that the root bus controller is merely the highest level bus controller for a sub-tree that could possibly connect to a parent bus controller as a part of a larger tree.  The appellate court rejected this stating that if Fifth Generation’s arguments were to be adopted the language of claim one providing that the route bus controller is “for connecting said binary tree connected bus controllers to said host computer”  would lose its plain meaning. Further the court found that the claim language required “one of said bus controllers” to be the root bus controller, and if this generation’s interpretation were adopted this element of the claim would be rendered superfluous.

Subject matter of patents incorporated by reference not necessarily imported into the claims. The second issue in the case was whether patents, disclosing subtress, incorporated by reference in the ‘024 patent supported Fifth Generation’s interpretation of the claims. The the court found that a patent does not need to expressly recite concepts disclosed in patents incorporated by reference in order to incorporate them into the later patent specification.  Yet, this did not save Fifth Generation because the court stated that not every concept in prior art inventions necessarily are imported into every claim of the later patent through an incorporation by reference statement.

Judgment of Non-Infringement Affirmed.

St. Clair Intellectual Prop. Consultants v. Cannon, 2009-1052 (Fed. Cir. 2011) [PDF]

This case raised the issue of whether one or two references to an alternative embodiment (MPEG) in the specification can overcome the predominance and repeated reference to the first embodiment (still images). Two issues are explored here (1) whether all the claims were limited to an interpretation requiring the infringing devices to have formats corresponding to different computer architectures, and (2) whether the claim language of “plurality of different data formats” includes moving (movie) images or only still images. The district court found infringement, the appeals court disagreed and reversed, with one judge dissenting.

In St. Clair the plaintiff sued several digital camera manufacturers for infringing  United States Patent Nos. 5,138,459 (“‘459 patent”), 6,094,219 (“‘219 patent”), 6,233,010 (“‘010 patent”), and 6,323,899 (“‘899 patent”).  Claim 16 of the ‘459 patent provides: “A process for storing an electronically sensed video image comprising the steps of: . . . recording in selectable addressible memory means at least one of a plurality of different digital output data format codes where each of said plurality of out-put data format codes corresponds respectively to one of a like plurality of different data formats for different types of computer apparatus.”

The parties disputed whether the phrase “plurality of different data formats for different types of computer apparatus” language” was limited to formats related to different computer architectures (e.g., IBM or Apple PCs) or if it could also include formats related to different computer applications (e.g., software that can run GIFF or PICT). If the phase was limited to different computer architectures then Fuji, the appellant, would avoid infringement.

Majority: Claims Treated Similarly Requiring Different Computer Architectures. Reviewing the specification and the prosecution history, the majority found that the claim phrases should be limited to the  different computer architectures and not the broader interpretation of formats related to different computer applications. During the prosecution the inventors stated, as summarized by the court, that the invention ” ‘solve[d] a long felt need’ by allowing data format compatibility with a ‘plurality of types of personal computers manufactured by different [personal com-puter] companies, IBM PC, Apple, Sun Micro Systems, Digital Equipment, etc.’ ”

Dissent: Not All Claims Contain Architecture Language and Deserve Broader Interpretation. Some The dissent agreed with the majority regarding claims having the language of  “a plurality of different file formats for different types of computer apparatus” or “a plurality of different data formats for different types of information handling systems.”   However, the dissent asserted that the claims of the ‘010 and ‘899 patents did not contain the “for different types of computer apparatus” limitation. For example, claim 1 of the ‘010 patent provides “…a digital control unit for formatting said digital image signal in one of a plurality of computer formats.” The dissent asserted “Because the inventors omitted the ‘for different types of computer apparatus’ limitation, the plain language of those claims is broader.” Further the dissent found that  neither the specification nor the prosecution history supported importing such a limitation into those claims. The dissent would have affirmed the district courts finding of infringement.

Majority: Use of “Still” and “Image” throughout Patents Excludes Video Coverage. The majority found the repeated use of the word  “still” in the title and the abstract of the ‘459 and ‘219 patents, and its use throughout the specification and summary of invention of all of the patents precluded the possibility that the “plurality of data formats” limitation in claim 16 included moving image formats. The majority noted that the word movie did not appear anywhere in the patents. A finding that this limitation covered movie formats would have resulting in infringement.

Dissent: Single Reference to MPEG and DVI is Sufficient to Broaden Claim to Cover Video. The disent noted that the specification expressly names MPEG and DVI compression as “an alternative embodiment of the present invention.” ‘459 patent col.10 ll.46-59. It is known that MPEG and DVI are video formats. The dissent found that the claim language of “plurality of different data formats” plainly included MPEG video and thereby video formats. Again the dissent’s interpretation would have resulted in affirmation of the district courts finding of infringement.

On November 18, 2010, a patent application [USPTO, PDF] owned by published showing the use of a device, such as an iPhone, to control FM radio. Other sources have noted or speculated that the iPhone  has an FM radio receiver [The Register, CNet UK, iPhone Hacks]. This patent application supports the prior reports from CNet that Apple is developing a radio app for the iPhone.

The application discloses that a mobile device, such an an iPhone, that provides an interface for controlling the station that is received through an FM receiver and played on the device. The application shows that the device can provide the use with the options for calling, texting, or sending an email to the radio station that is currently being played through the device.

The application suggests that the FM function or App can integrate with purchasing function to allow a user to purchase a song–presumably through iTunes–that is played on an FM station, as previously suggested by 9 to 5 Mac.

To be clear, the application discloses the device, i.e. iPhone, can include a FM receiver [ see ¶¶ 51, 86] however, the application does not foreclose the possibility that the FM Receiver is external to the device (e.g is an add-on accessory) [ see ¶ 86, “Example mobile devices 701 and 702 are mobile devices that are equipped with or can be coupled to an RF receiver 121 that can receive radio broadcast and a simulcast data stream.”]

The patent application also reveals the following:

• Providing users with links to other sites (i.e. “Watch on YouTube,” “Books at Amazon.com”, or Wikipedia)  having content related to the song being played.
• Serving advertising related to the content being played–i.e. on offer to buy tickets  for a concert of the artist currently being played in the geographic area of the user.
• Suggesting other radio station having similar content as the one currently playing when the current radio station begins to become out of range.
• Tracking the history of radio stations tuned by a user, categories of content listened to and for how long–“identify the user’s interests, which can be used by the server to make content recommendations to the user.” The application discloses that a user can turn off the tracking.
• A social networking component where a user can disclose to other in a social network the user’s listening history–similar to Pandora or Last.fm
• Providing a location aware function that suggests radio stations based on the location of the user.
• A library aware function that integrates with a users library of music–iTunes–were the application will refrain from suggesting the purchase of a song currently being played where the user already owns that song.

Current Radio apps are restricted to streaming the content of the FM station over the Internet because it appears currently that Apple has not allowed developers to utilize the FM receiver function in the iPhone, if it exists there. Time will tell whether Apple allow developers to utilize the FM receiver function for third party apps.