Real Estate Software Patent: User Action Steps Prevent Direct Infringement

US5032989Fig3Move, Inc. v. Real Estate Alliance Ltd., Dkt. No. 2012-1342 (Fed. Cir. March 4, 2013)

Move sought declaratory judgement of non-infringement of two of Real’s patents, U.S. 5,032,989 and U.S. 4,870,576. Real counterclaimed  that Move’s “Search by Map” and “Search by Zip Code” website functions infringed the patents. The district court issued summary judgement of non-infringement.

Claim 1 of the ‘989 patent was at issue on appeal and was directed to a method for locating real estate properties using a zoom enabled map on a computer. Claim 1 provided:

1. A method using a computer for locating available real estate properties comprising the steps of:

(a) creating a database of the available real estate properties;
(b) displaying a map of a desired geographic area;
(c) selecting a first area having boundaries within the geographic area;
(d) zooming in on the first area of the displayed map to about the boundaries of the first area to display a higher level of detail than the displayed map;
(e) displaying the first zoomed area;
(f) selecting a second area having boundaries within the first zoomed area;
(g) displaying the second area and a plurality of points within the second area, each point representing the appropriate geographic location of an available real estate property; and
(h) identifying available real estate properties within the database which are located within the second area.

Direct Infringement. In a prior appeal the Federal circuit determined that “selecting an area” as recited in steps (c) and (f) of claim 1 meant that “the user or a computer chooses an area having boundaries, not when the computer updates certain display variables to reflect the selected area.”

The Move system allowed the user to select a predefined area, such as a city, and the system would then zoom into the map according to the predefined boundaries of the area. The court found that the system did not “select an area having boundaries” by showing the predefined area after a user selected the area. Rather the computer just retrieved the map associated with the user’s choice. Therefore Move did not directly carry out the (c) and (f) steps of the claim.

Since Move did not directly carry out all of the steps, it must have direct or control over the performance of the missing steps by another party to be liable for direct infringement. The court found that it did not exert the required direction or control over its users to be liable for direct infringement.

Indirect infringement. The Federal Circuit found that the district court did not conduct the required analysis as to whether Move could be liable for inducing infringement by inducing its users to perform the claimed steps that Move did not itself perform.

Claim Language Suggestions. To allow for direct infringement, the claims could have been worded differently. Assuming the following was supported by the specification and permissible by the prior art, step (c) could have provided “receiving from a user a selection of a first area having boundaries within the geographic area” and step (f) could have provided “receiving from a user a selection of a second area having boundaries within the first zoomed area.” Such language might provide a better case for direct infringement.

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Gambling Machine Patents: Claims Requiring Player Action Raise Indirect Infringement Issues

USPatent7056215Aristocrat Tech. Australia v. Int’l Game Tech., Dtk No. 2010-1426 (Fed. Cir. 2013).

Aristocrat sued IGT alleging that IGT’s gambling game devices infringed U.S. Patent No. 7,056,215 (“the ’215 patent”) and U.S. Patent No. 7,108,603 (“the ’603 patent”). The district court granted summary judgment of non-infringement. This case presented an issue of direct vs. indirect infringement because certain claim language was interpreted to require a user/player to perform a step. In order for a party to be liable for direct infringement, “that party must commit all the acts necessary to infringe the patent, either personally or vicariously.” Therefore, in this case, if a player/user was required to perform a step, then IGT would not be liable for direct infringement.

Claim construction. Claim 1 of the ‘215 patent provided system included the following disputed claim language: (1) “awarding said one progressive prize” and (2) “making a wager”.

The Federal Circuit found that “awarding said one progressive prize” required the conferring of rights from the operator of the game to the player and not simply displaying the amount of the prize won. Therefore the actions by IGT’s employees in testing the game were not an infringing activity because during the testing of gaming machines legal entitlement to a prize is never conferred upon IGT employees.

The court also found that “making a wager” meant “betting, which is an act performed by the player” not simply processing a bet by the device.

Direct Infringement. The court found that under the properly construed claims no single actor performed all the steps of the claim. Further the court found that the acts of the user/player could not be imputed to the casino. The court stated “One party’s direction or control over another in a principal-agent relationship or like contractual relation-ship operates as an exception to this general rule, but absent that agency relationship or joint enterprise, we have declined to find one party vicariously liable for another’s actions.” The court found that IGT had no relationship with the player so as to impute the actions of the player to IGT. As a result, the court found no direct infringement.

Indirect infringement. The court reversed and remanded on the issue of indirect infringement, allowing the plaintiff to press its indirect infringement claims. The court stated, “[a] party who knowingly induces others to engage in acts that collectively practice the steps of the patented method—and those others perform those acts—has had precisely the same impact on the patentee as a party who induces the same infringement by a single direct infringer; there is no reason, either in the text of the statute or in the policy underlying it, to treat the two inducers differently.”

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MySpace and Craigslist Invalidate Patents on Database with User Creatable and Categorizable Entries

MySpace, Inc. v. Graphon Corp., Dkt. No. 2011-1149 (Fed. Cir. March 2, 2012).

MySpace and Craigslist sued Graphon for declaratory judgement of non-infringement of U.S. Patent Nos. 6,324,538, 6,850,940, 7,028,034, and 7,269,591 (patents in suit). Graphon counterclaimed for patent infringement. The district court found the claims at issue in the patents in suit were invalid as either anticipated or obvious based upon a system called the Mother of all Bulletin Boards (MBB) and the Federal Circuit agreed.

User Manipulable Database Entries. The patents in suit were directed to a method and apparatus that allowed a user to create, modify, and search for a database record over a computer network. The inventors of the patents in suit claimed the prior systems, like Yahoo! directory, provided that the search engine operator rather than the users would categorize website listings. Under this system of categorization, the categorizer would miscategorize entries without user input. The inventors attempted to overcome this problem by allowing users to create and edit one or more database entries with their own text and graphics and then to create for each entry searchable categories that best matched the information in each entry.

Prior Art. Before the earliest priority date of the patents in suit, the Mother of all Bulletin Boards (MBB) was developed at the University of Colorado. The MBB allows the creation of an Internet catalogue that grew through user input without intervention from an administrator. The data in the MBB system was stored hierarchically as apposed to relationally (e.g. a relational database).

“Database” Includes Hierachical and Relational. The Federal Circuit found that the disputed claim term “database” included both hierachical and relational databases in the patents in suit. Therefore, the MBB’s use of a hieracrchical system met the claim term “database” and therefore resulted in the invalidity of the subject claims of the patents in suit. The court noted that the term “database” is generally understood to include different types of data organization systems, including hierarchical and relational systems. The court rejected Graphon’s argument that the written description and the prosecution history of the patents in suit indicate that the term database should be limited to relational database. If the term was so limited, the MBB would likely not invalid the patents in suit. The court found that the written description described features contained in multiple types of databases and therefore the term database could not be limited to relational databases.

Written Description & Reading in Limitations. The court explain that two principles on claim construction were complementary rather than competing. The first principle is that the written description is the best source for understanding the technical meaning of a claim. The second principle is that limitation from the written description cannot be read into the claims absent a clear intention by the patentee. The court explained that there are two limiting factors during claim construction–what was invented and what was claimed. A patentee can claim less than was invented, but never more than was invented. The court directed that we look to the entire patent to determine what was invented. Yet to determine what was claimed, the precise words of a claim are to be reviewed and the written description is used as an aid in understanding those words.

Address Patentable Subject Matter First? The dissent argued that before considering whether the patents in suit were invalid as obvious or anticipated, the court had a duty in the first case to determine whether the patents claimed patentable subject matter under section 101, even if the issue was not raised by the parties or the trial court. The majority rejected this approach. The majority noted the difficulty that courts had in defining the bounds of patentable subject matter. The majority stated that validity determinations under section 102, 103, 112 (anticipation, obviousness, and enablement) are the best approach to resolving most cases. These approaches avoid the search for universal truths that may be necessary when searching the bounds patentable subject matter under section 101. However, the court did not say that section 101 could never be raised first in a patent suit. Yet in first looking to sections 102, 103, and 112, the court said that questions of patent validity could be concluded in many cases without wading into the “murky morass that is section 101 jurisprudence.”

“For” Interpreted as Must Perform v. Capable of Performing

Typhoon Touch v. Dell Inc., et al., Dkt. No. 2009-1589 (Fed. Cir. Nov. 4, 2011).

Typhoon sued Dell, Lenovo, San Due Ventures, Toshiba, Fujitsu, Panasonic, Apple, and HTC alleging infringement of US Pat. Nos. 5,379,057 and 5,675,362, each patent directed to a portable computer with touch screen. The appeals court reviewed the district courts finding of non-infringement and invalidity.

Claim 12 of the ‘057 patent is a representative claim, with terms in dispute emphasized:

A portable, keyboardless, computer comprising:

an input/output device for displaying inquiries on a touch-sensitive screen, said screen configured for entry of responses to said inquiries;

a memory for storing at least one data collection application configured to determine contents and formats of said inquiries displayed on said screen;

a processor coupled to said memory and said in-put/output device for executing said data collection application; and

an application generator for generating said data collection application and for creating different functional libraries relating to said contents and said formats displayed on said screen, said applica-tion generator further comprising means for cross-referencing responses to said inquiries with possible responses from one of said libraries; and

a run-time utility operating in conjunction with said processor to execute said application and said libraries to facilitate data collection operations.

Must Perform v. Capable of Performing. Typhoon argued that the district court erred in construing the claim term “a memory for storing at least one data collection application configured to determine contents and formats of said inquiries displayed on said screen.” The district court found that the memory must perform the recited function.  Typhoon argued the district court was wrong and that an infringing device need only be capable of performing the recited function.  In other words, as long as the memory is capable  of being configured to (e.g. programmed to) store the data collection application, even if the memory is not so configured, the element is satisfied.

The Federal Circuit reviewed prior cases and noted that  “capable of” did not mean “might be later modified to perform that function.” It said that infringement may not be based on “a finding that an accused product is merely capable of being modified in a manner that infringes the claims of a patent.” Further the specification supported the district court’s construction.

Algorithm Adequately Disclosed. The district court found the term means for cross-referencing responses to said inquiries with possible responses from one of said libraries” was indefinite because the specification failed to adequately provide an algorithm for carrying out the means element.  The court noted that “a means-plus-function term is impermissibly indefinite under §112 ¶ 2 when the specification “simply describes the function to be performed, not the algorithm by which it is performed.”

The court provided that an algorithm in computer systems encompasses “in essence a series of instructions for the computer to follow” whether in mathematical formula, or a word description of the procedure, or shown in a flow chart. The court also observed that “[t]he preferred definition of ‘algorithm’ in the computer art is: ‘A fixed step-by-step procedure for accom-plishing a given result; usually a simplified procedure for solving a complex problem, also a full statement of a finite number of steps.’”

The court review the specification of the patents at issue and found that the following excerpt of the specifcation sufficiently disclosed an algorithm:

Cross-Referencing imports that, for each answer field, the entered response can be related to a library to determine if the response in the answer field is existent in the library. In other words, the answer information is cross-referenced against that specific library. If it is available in that library, then, corresponding to that library entry, an action is executed. For instance, the associated action can involve an overlay window that alerts the user of the fact of the match with the library entry, or dis-plays the contents of an information field stored in association with that entry in the memory.

The court affirmed on the issue of non-infringement and reversed on the issue of invalidity.

Sufficient Computer Structure Disclosure for Means-Plus-Function Elements

HTC Corp v. IPCom GMBH, Dkt. No. 2011-1004 (Fed. Cir. Jan 30, 2012) [PDF].

HTC sue IPcom for declaratory judgement of non-infringement of IPCom’s Patents, including U.S. Pat. No. 6,879,830 and IPCom countersued for infringement. The ‘830 patent is directed to the handover of a cellular phone from one base (tower) to another, as for example, when a person uses a cell phone in a car traveling between coverage areas.  The invention is intended to reduce the chance of service interruption during the handover.

Claim 1 provides:

A mobile station for use with a network including a first base station and a second base station that achieves a handover from the first base station to the second base station by:

storing link data for a link in a first base station,

holding in reserve for the link resources of the first base station, and

when the link is to be handed over to the sec-ond base station:

initially maintaining a storage of the link data in the first base station,

initially causing the resources of the first base station to remain held in reserve, and

at a later timepoint determined by a fixed pe-riod of time predefined at a beginning of the handover, deleting the link data from the first base station and freeing up the resources of the first base station, the mobile station comprising:

an arrangement for reactivating the link with the first base station if the handover is unsuc-cessful.

At summary judgement, HTC claimed that claims 1 and 18 (similar to claim 1), were invalid as indefinite because (1) they claimed both an apparatus and method steps and (2) the patent failed to disclose structure corresponding to the claimed means-plus-function element “arrangement for reactivating.”

Over Emphasis on Prosecution History. While the district court found the claims invalid because they claimed both apparatus and method steps, the Federal Circuit disagreed.  The Federal Circuit found the claim was an apparatus claim directed to a moble station (cellular phone) to be used within a network. In interpreting the claim language the Federal Circuit considered factors set out in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc): (1) the words of the claim, (2) the specification, (3) the prosecution history, and (4) extrinsic evidence. The Federal Circuit found that the district court put too much emphasis on the prosecution history. The patentee in response to an office action stated, “the cited section of [the prior art reference] clearly describes a process that is completely different from the claimed process. . .” (emphasis added). The Federal Circuit  noted that “claim language and the specification generally carry greater weight than the prosecution history.” The court found that the attorney’s signle reference to a “process” in response to an office action was insufficient when viewed in relation to the plain language of the claims and specification.

Sufficient Computer Structure. The Federal Circuit found that the district court erred in finding that the disclosure of a processor and transceiver was sufficient structure. The Federal Circuit noted that when considering whether their is sufficient support in the specification for a means-plus-function limitation, the disclosure of a general purpose computer or micro processor is not enough. Instead an algorithm must also be disclosed which the computer/processor executes. A patent must disclose “a means for achieving a particular outcome, not merely the outcome itself.” Yet, the appellate court found HTC waived any argument regarding whether the ‘830 patent disclosed a sufficient algorithm.

Further, the Federal Circuit rejected HTC’s argument that the specification needed to disclose the precise circuitry, components, or schematics or controllers would be employed. The court provided that level of hardware disclosure is not necessary, stating “as long as a sufficient algorithm describing how a general-purpose computer will perform the function is disclosed, reference to such general-purpose processors will suffice to overcome an indefiniteness challenge.”

High Bar for Implied Redefinition of Claim Term

Thorner v. Sony Computer, Dkt. No. 2011-1114 (Fed. Cir. Feb 1, 2012) [PDF].

Craig Thorner and Virtual Reality Feedback Co. sued Sony Corporation alleging  Sony’s game controllers with tactile feedback infringed U.S. Patent No. 6,422,941. On appeal Thorner argued that the district court erred in the construction of two term from claim 1.

Claim 1 provides in relevant part:

In a computer or video game system, apparatus for providing, in response to signals generated by said computer or video game system, a tactile sensation to a user of said computer or video game system, said apparatus comprising:

a flexible pad;
a plurality of actuators, attached to said pad, for selectively generating tactile sensation; and
a control circuit . . . for generating a control signal to control activation of said plurality of actuators . . . .

District Court Claim Construction. The district court construed the term (1) “flexible pad” to mean “capable of being noticeably flexed with ease” and (2) the term “attached to said pad” to mean attached to the outside of the pad.” The district court reasoned that the specification redefined the term attached by implication.

Claim Term Meaning. The Federal Circuit noted that words of a claim are given their ordinary and customary meaning (ordinary meaning rule) as understood by one skilled in the arts unless (1) the patentee acts as a lexicographer and provides his own definition, or (2) patentee disavows the full scope of a claim in the specification or during prosecution.

Term Use Only One Way in Spec Not Alone Limiting. The court held that the fact that the specification never used a word of a claim in reference to an embodiment that would cover the accused device–here the specification never used the word “attached” to refer to an actuator located on the interior of a controller–does not implicate either exception to the ordinary meaning rule. In other words the court said “[i]t is not enough that the patentee used the term when referencing an attachment to an outer surface in each embodiment.” The court noted that the plain meaning of the term attached included both internal and external attachment. Therefore, the court concluded that the district erred in restricting the term “attached” to only external attachment.

High Standard for Implied Redefinition. Further the court stated that for a term to be impliedly redefined, the redefinition must be be so clear that it equates to an explicit redefinition. The court stated that referring to two terms as alternatives or “disclosing embodiments that all use the term the same way” is not enough to redefine a claim term. The court said “A person of ordinary skill in the art would have to read the specification and conclude that the applicant has clearly disavowed claim scope or acted as its own lexicographer.”

The court also concluded that the district court erred in limiting the term “flexible pad” to those “capable of being noticeably flexed with ease.”