Articles Posted in Patent Litigation

In April of 2006, an Eastern District of Texas jury awarded TiVo $73.9 Million in damages for EchoStar’s infringement of several claims of U.S. Patent No. 6,233,389. The ‘389 patent covers digital video recorder (“DVR”) technology that covers time shifting both for previously recorded programs and for programs that are currently being recorded. You may recall TiVo’s commercials proclaiming that “you can pause live TV.” The jury found that EchoStar, operator of the Dish Network, infringed on both the hardware claims and the software claims. The district court issued a permanent injunction against EchoStar and entered the judgment. EchoStar appealed.

On an emergency motion by EchoStar, the Court of Appeals for the Federal Circuit (“CAFC”) stayed the permanent injunction pending the outcome of the appeal. On January 31, 2008, although the CAFC agreed with EchoStar that it did not infringe on the hardware claims, the CAFC upheld the infringement of the software claims. The CAFC explained that because the jury had not segregated the damages award along the hardware and software claims, the $73.9 Million award still stood. In fact, the CAFC instructed the lower court to increase the monetary award based on EchoStar’s continuing infringement while the lower court’s judgment was stayed. Click To Read The CAFC Opinion.

February 1, 2008. The Los Angeles, California district court issued summary judgment of invalidity of plaintiff David Sitrick’s asserted claims from his two U.S. patents (5,553,864 and 6,425,825) against DreamWorks and Warner Brothers. The patents claim the replacement of images and voices into pre-existing movies and video games. The District Court held that the asserted claims were invalid for lack of enablement for integration of voice or images into DVDs (i.e. the specification did not teach a person of ordinary skill in the art how to practice the invention – without undue experimentation – as claimed for movies). Even though the patents enabled practicing the invention for video games, the district court held that the full scope of the claimed invention – including integration into movies – must be enabled.

The Court of Appeals For the Federal Circuit (“CAFC”) affirmed the lower court’s ruling and the invalidity of the asserted claims for lack of enablement:

Defendants showed with clear and convincing evidence that one skilled in the art could not take the disclosure in the specification with respect to substitution or integration of user images in video games and substitute a user image for a pre-existing character image in movies without undue experimentation. Defendants supported their motion for summary judgment of invalidity by reference to the teachings of the specifications and the opinions of their two experts. Read the CAFC opinion.

In a patent infringement lawsuit, medical device maker TriMed, Inc. had accused Stryker Corporation, a competing medical equipment manufacturer of devices that mend broken bones, of infringing on its utility patent related to an implantable wrist-fracture treatment medical device. The District Court in Los Angeles, California had adopted Stryker’s proposed claim construction and granted summary judgment of non-infringement.

TriMed appealed and the Federal Circuit Court of Appeals (“CAFC”) held that the claim at issue of U.S. Patent No. 5,931,839 “recites sufficient structure on its face for performing the claimed functions, and therefore, contrary to the district court’s interpretation, does not involve a means-plus-function limitation.” In holding that the lower court had erred in its claim construction and order of non-infringement, the Federal Circuit stated:

Stryker’s motion for summary judgment of noninfringement was premised solely upon reading the claim language at issue as a means-plus-function limitation. Having properly construed the relevant claim language as falling outside the ambit of § 112 ¶ 6, we hold that Stryker has failed to demonstrate that there is no genuine issue of material fact that its accused devices do not infringe on the ‘839 patent. By Stryker’s own admission, the structural limitation of holes in claim 1 is certainly present in its accused devices.