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Georgia IP Litigation: July 2015

BLOGS: Georgia IP Litigation

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Friday, July 31, 2015, 10:08 AM

Markman Ruling Construes “Network” Rejecting Parties' Proposals

Plaintiff Microwave Vision, SA (“Microwave Vision”), owner of U.S. Patent No. 7,443,170 (the “‘170 Patent”), brought an action for patent infringement along with MVG Industries, SAS, and MVG, Inc. (collectively “Plaintiffs”) against ESCO Technologies Inc. and ETS-Lindgren Inc. (collectively the “Defendants”).

The ‘170 Patent covers systems used “to measure various parameters relating to antennas used in wireless devices.”  P. 2.  The system uses the same array of probes to obtain multiple measurements by rotating the probes or the antenna to achieve different perspectives.  One of Plaintiffs’ devices is depicted below:
Judge Steve C. Jones provides a thorough exposition of the relevant legal standard for construing claims at pages 3 - 6 of his 52-page Order.  The nexus of the parties' claim construction dispute centers on the construction of the term “network of probes.”  The parties agreed that the ‘170 Patent improved on prior art, which used a similar set of probes, by allowing pivoting of the probes and the tested antenna to garner additional data points.  Greater measurement resolution is achieved by the system through obtaining more measurement points than the number of probes.  Microwave Vision argues its ‘170 Patent claims protect its system of achieving this increased resolution from infringement by Defendants.
Divergent claim constructions of the key term “network of probes” were proffered by Plaintiffs and Defendants.  Plaintiffs argued that the term should be construed to require probes that “can each send signals to a common receiving device,” while the Defendants argued the probes must be “communicatively interconnected.”  Pp. 11-12.  The Court focused on the thrust of the dispute – “what it means for a given set of ‘probes’ to be ‘networked.’”  P. 12.
In its examination of the claims,[i] the Court found no mention of sending signals to a common receiving device or communicative interconnectivity.  Thus the functional limitations proposed by each side was not mandated by the claim language. P. 13.  The Court further found that the patentee had not acted as lexicographer to define the term in the specifications.  P. 13.  The Court found the arguments of each side effective against the other and thus neither proposed construction had specification support.  P. 13.  Similarly, the Court dissected the extrinsic evidence offered by each side in support of its proposal and found that evidence lacking.
The Court found fault with the premise of both sides that a “network” must involve communications, noting the reference to a network of trains in “Newton’s Telecom Dictionary.”  P. 15, n. 4.  The Court did not find dictionary references to “nodes” in communication systems to be synonymous with “probes” as used in the ‘170 Patent.  Apparently, Judge Jones did not feel the compulsion that the parties felt that communications of some kind must be included as a limitation, probably based on the probes as manifested in real-life employing communication of the measurements taken.  “This is not to say that Claim 12 could not include such features.  But they are not required limitations.”  P. 16, supported by n. 7.
The Court’s independent approach to deriving a proper construction offers a lesson to IP litigators both on how to systematically arrive at a supportable construction and on how to persuasively document that process.   Judge Jones followed the process he described in his Legal Standard section first looking to the claim language (including the language of non-asserted independent claims).  P. 18, n. 9.  That examination of claims led Judge Jones to conclude that the “network of probes” require a particular structure. 
First the probes must be in a single plane.  Pp. 18-20.  This requirement was further supported by repeated terminology in the specifications, which in turn was further supported by the prosecution history.  P. 20.  The term Judge Jones chose to describe this relationship was “coplanar.”  P. 21, n. 10.
Second, the probes must “have a fixed relation to one another.”  P. 21.  Pointing to language that requires the pivoting of the network of probes, Judge Jones noted they must move “as a single unit, which in turn necessitates a fixed relationship.”  P. 22.  Dependent claim references to distribution of the probes at a given pitch along an arc further require a fixed relationship between the probes.  P. 22.  Similarly, multiple references to pivoting, tilting, moving, and pitch distribution in the specifications were cited for additional support.  P. 23.  The Court next points to the prosecution history where the patentee distinguished other prior art measuring probes for not involve pivoting, moving, or specifying an angular pitch.[ii]  P. 24.
While stating that extrinsic evidence was unnecessary to support the Court’s construction, Judge Jones nevertheless delivered the coup de grȃce to the parties’ constructions, pointing out the ‘170 Patent was filed pursuant to the Patent Cooperation Treaty based on a French Application.  Judge Jones then noted that the translation of the French application included the term at issue:  “network of probes.”  P. 26  The Court’s exegesis of the French term translated – réseau de sondes – supplied almost poetical support for his construction.  Réseau means a system of lines forming small squares of standard size forming a network to facilitate measurements or detect changes (in film), and sonde means various devices of testing physical and meterological conditions (above the earth’s surface) and the Middle French word sonde referred to a nautical “sounding line.”  Pp. 26-27.  Thus, as Judge Jones noted, the terms from which “network of probes” derived referred to probes with a particular physical arrangement rather than signal sending or other electronic communication characteristics.  P. 27.  Despite the Court’s repeated disavowing of reliance upon the historical genesis of the term at issue, one can almost see the Judge’s smile upon its discovery.
Thus, the Court, relying only upon the claims, specifications, and prosecution history, found “network of probes” to mean “multiple probes having a fixed and coplanar relationship to one another.”  P. 28-29.
The remaining constructions relating to the structure required for means-plus-function claims.  In determining the precise structures required, Judge Jones relied primarily on the disclosures in the specifications, noting that the first step was to identify the claimed function and next to determine what structures correspond to that function and examine the specification or prosecution history for a clear link of that structure to the recited function.  P. 31.  The Court again took a minimalist approach.  With regard to the first construction of a means-plus-function claim, the Court found the structure disclosed in the specifications that was required to perform the claimed function but refused to import additional limitations that were unnecessary for the claimed function.  The required structure does not need to include limitations already in the claim, but only those necessary to perform the claimed function that appear in the specification but not the claim.  While the Court decided not to adopt either side’s argument, a structure was found but without all of the limitations proposed by Plaintiffs.
However, with the final means-plus-function claim, the Court found that Plaintiffs had only disclosed one structure in the specification and thus the structure must “be limited to the single disclosed structure and equivalents.”  P. 48, citing Mettler-Toledo, Inc., v. B-Tek Scales, LLC, 671F.3d 1291, 1296 (Fed. Cir. 2012).
This Order demonstrates a sophistication of claim construction analysis extending beyond the arguments of counsel, yet bound by precedent and restraint.
The case is Microwave Vision, S.A., MVG Industries, SAS, and MVG, Inc. v. ESCO Technologies, Inc., and EST-Lindgren Inc., Dkt. 59, decided July 15, 2014, in 1:14-cv-01153-SCJ, in the United States District Court for the Northern District of Georgia, Atlanta Division, assigned to Judge Steve C. Jones.

[i] Although only Claim 12 was in dispute.  The Court looked at all the claims to see if their wording informed the correct finding.
[ii] Given the Court’s multiple references to a “given pitch” or “set pitch,” it is interesting to note that the Court’s ultimate construction required fixed positions but included no requirement of a symmetry of pitch in the locations.

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Thursday, July 30, 2015, 10:28 AM

Sugartown Takes on Old Navy in Copyright Infringement Action over Lilly Pulitzer Fashion Designs

Sugartown Worldwide, LLC (“Sugartown”), a Delaware limited liability company with its principal place of business in Pennsylvania, filed suit for copyright infringement, money damages, injunctive relief, seeking destruction of infringing materials, costs, and attorneys’ fees against Old Navy (Apparel), LLC, Old Navy, LLC (collectively “Old Navy"), and The Gap (“Gap”) (altogether the “Defendants”).

Sugartown owns the Lilly Pulitzer trademarks under which it markets and distributes Lilly Pulitzer apparel and accessories, including within the Northern District of Georgia.  The district is also home to Sugartown’s parent company and many of its executives and corporate officers.  The Defendants are California based companies registered in Delaware and sell products throughout the country, including in this District, through retail outlets and over the Internet.

According to the complaint, Lilly Pulitzer began designing, manufacturing, and selling bright and colorful prints on distinctive fashion apparel in the 1950’s.  In 1959 Lilly Pulitzer, Inc., was founded and the rights to the brand were purchased by Sugartown in 1993, which continued the creation of distinctive designs with its own design team.  There are over 100 Lilly Pulitzer retail stores in the United States operated by Sugartown or through licensing agreements.  In addition, Lilly Pulitzer designs are sold over the Internet and by major department stores and individually owned stores.

The Lilly Pulitzer design team creates original artwork, often printed on canvas, which are then registered with the United States Copyright Office.  This artwork is then used with color modifications on fabric which comprises Lilly Pulitzer products.  The complaint establishes the credentials of the original artwork for two designs identified as the High Tide Design and the Sparks Fly Design, both of which were duly copyrighted.  

Derivations of these patterns were designed in 2013 and introduced on Lilly Putitzer products in 2014.  The advertising and wide distribution serves as the basis for allegations that Defendants had access to the patterns.  The gravamen of Sugartown’s complaint is that these patterns were copied by Defendants and substantially similar designs were introduced by Defendants thereafter as their own products.  The complaint highlights consumer comments on social media as to the close similarity of the designs and depicts in the complaint itself side-by-side comparisons, two of which are shown below:

By its complaint Sugartown seeks to stem the tide of Defendants’ alleged copying and let the sparks fly where they must (and not fly where they must not).
Sugartown Worldwide, LLC v. Old Navy (Apparel), LLC, Old Navy, LLC, and The Gap, Inc., 1:15-CV-02633-ELR, United States District Court for the Northern District of Georgia, Atlanta Division, filed July 24, 2015, before Judge Eleanor L. Ross.

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Wednesday, July 29, 2015, 9:56 AM

Georgia Becomes the First State to Mount a Direct Challenge Against Unauthorized Publishing of Annotated Code

In what has already become news in the copyright community nationwide, the State of Georgia has launched a legal campaign against Public.Resource.org, Inc., a California non-profit corporation that dedicates itself to compiling, scanning, and publishing laws, codes, and rules from around the world.

Photo credit: georgiajusticeblog.com
The complaint was filed by the Code Revision Commission, on behalf of the General Assembly of Georgia and the State of Georgia, on July 21, 2015 in the Northern District of Georgia, alleging that Public.Resource.org's act of publishing and making available on the internet over 140 volumes/supplements of the Official Code of Georgia Annotated (O.C.G.A.) violated U.S. copyright law.

According to the complaint, Georgia contracts with LexisNexis to publish an annotated version of Georgia's state laws.  Under the contract, LexisNexis is required to make an unannotated version of the code available to the public for free.  In order to recoup its publishing costs, however, LexisNexis is responsible for drafting and making "additions to the statutory text," such as summaries of significant judicial decisions relating to various parts of the code.  The complaint, which acknowledges that the laws themselves are uncopyrightable, refers to these additions as the "Copyrighted Annotations."  The State of Georgia asserts that these Copyrighted Annotations are prepared as "works for hire" by LexisNexis and thus claims exclusive copyright ownership on that basis.

The State asserts that Public.Resource.org illegally copied the O.C.G.A. containing the Copyrighted Annotations and then uploaded copies to various websites, including its own sites and archive.org, even going so far as to post a notice that members of the public "can copy, modify, distribute and perform the work, even for commercial purposes, all without asking permission." (Compl. at para. 17, citing https://archive.org/details/govlawgacode392000, which indicates that O.C.G.A. Volume 39, 2000 Edition, Title 51 is subject to a “CC0 1.0 Universal” license.)  The complaint goes on to allege that the defendant's actions are part of a larger plan to improperly influence the government to modify the copyright law and force government entities to "expend tax payer dollars in creating annotated state codes."

The State then criticizes the defendant's founder, Carl Malamud, claiming that:
"[I]n January of 2014, Carl Malamud, Defendant’s founder and president, testified in front of the U.S. House of Representatives, House Judiciary Committee, to advance an amendment to the U.S. Copyright Act making state and local official legal documents uncopyrightable for reasons of public policy. No such amendment has been adopted by Congress. On information and belief, Carl Malamud has engaged in an 18 year long crusade to control the accessibility of U.S. government documents by becoming the United States’ Public Printer – an individual nominated by the U.S. President and who is in control of the U.S. Government Printing Office. Carl Malamud has not been so nominated." (Compl. at para. 18.)
The complaint alleges that the defendant also distributed copies of the O.C.G.A. by thumb drive and mail to various members of the State of Georgia Legislature.  The State mailed a cease-and-desist letter to the defendant in July of 2013, with which the defendant openly refused to comply.  The complaint seeks redress for alleged direct and indirect copyright infringement under 17 U.S.C. Sec. 106, and prays for injunctive relief, seizure, impoundment, and destruction of all unauthorized works in the defendant's possession, as well as costs and attorneys' fees.

On its face, the State of Georgia appears to have an open-and-shut case, but it does raise the question of whether the "Copyrighted Annotations," which are heavily-relied upon by legal practitioners and the public alike, are "officially" part and parcel of the law such that they should also be deemed uncopyrightable works.  The complaint acknowledges that the "succinctness and accuracy of the judicial summaries are in large part what make them valuable to attorneys and others researching the Code." This recognition by the State along with the "official" blessing highlights the crux of the controversy: if the annotations are part of the "official" law of the state, can (or should) those annotations be protected by copyright law from free public dissemination?  It may well require Congressional action to preclude states from obtaining copyright protection on works made for hire pursuant to contract.

The case is Code Revision Commission et al. v. Public.Resource.Org, Inc., 1:15-cv-02594-MHC, filed July 21, 2015 in the Northern District of Georgia, Atlanta Division, and is assigned to Judge Mark Cohen.

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Tuesday, July 28, 2015, 7:08 AM

Sarvint Retains Jurisdiction in the Northern District in Another Order from Judge Batten

Judge Batten denied a motion brought by Carré Technologies, Inc. (“Carré”) to dismiss[i] apatent infringement action brought by Sarvint Technologies, Inc. (“Sarvint”) for lack of personal jurisdiction.  The Court began by incorporating discussions from its Order in the sister case of Sarvint v. OMsignal, on which we recently reported.
The accused product, referred to by Sarvint as a "Smart Shirt," is known as a Hexoskin Wearable Body Metrics Shirt Carré is based in Montreal and made “at least seven sales of allegedly infringing products to individuals in Georgia through its Internet website.”  P. 3.  Carré’s total sales to companies unaffiliated with Sarvint were four, totaling approximately $1,800 in revenue.  Images of the Hexoskin product from the Carré website appear below:

Carré’s motion to dismiss was filed on June 15, a little over two weeks prior to its denial.  The Court did note that the arguments relating to personal jurisdiction were “verbatim” reiterations of jurisdiction arguments made in opposition to an earlier filed motion for preliminary injunction.  Judge Batten rejected Sarvint’s argument that Carré had waived personal jurisdiction by participating in the adjudication of the motion for preliminary injunction or by waiting five months after the complaint was filed.  Although the Court said waiver of personal jurisdiction can be waived by substantial participation in the litigation, the circumstances of this case did not dictate the finding of a waiver.

The Court distinguished the line of authority relied upon by Sarvint on two grounds:  (1)  the Court had not yet ruled upon the preliminary injunction motion; and (2) Carré has not sought affirmative relief from the Court in any filing prior to raising the defense of lack of personal jurisdiction.

In applying the same test for personal jurisdiction as applied in the OMsignal case, the Court stated “[t]here can be no dispute . . . Carré falls within the ambit of the ‘transacts any business’ prong of Georgia’s long-arm statute.”  P. 9.  The Court next turned to the three-prong Federal Circuit test, citing Inamed v. Kuzmak, 249 F.3d 1356, 1360 (Fed. Cir. 2001).  Finding that once minimal contacts are established, “jurisdiction over a defendant is presumptively reasonable.”  P. 11.  Defendant must then present “a ‘compelling case’ as to why the exercise of jurisdiction would be unreasonable.”  Id., citing Burger King Corp. v. Rudzewicz, 471 U.S. 462, 476-77 (1985).  Carré made no attempt to meet that burden.  P. 14.

Carré met both the requirements of transacting business in Georgia related to the cause of action (specific jurisdiction) and the minimal contacts and fair play requirements by actually selling accused devices over the website into Georgia.

The Order was issued in Sarvint Technologies, Inc. v. Carré Technologies, Inc., No. 1:15-cv-00069, in the U.S. District Court for the Northern District of Georgia, Atlanta Division, on July 2, 2015, by Judge Timothy C. Batten, Sr. [Dkt. 37].                                                                                                                            

[i] Although not discussed in the Order, the last sentence denying the motion made reference to denial of transfer as well as dismissal.

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Monday, July 20, 2015, 4:47 PM

Comprehensive Ruling on Personal Jurisdiction and Transfer Issues Offers Cautions and Gems for In-house Counsel and Trial Lawyers

In a 46-page order, Judge Timothy Batten denied a motion to dismiss under FRCP 12(b)(2) and (3) for lack of personal jurisdiction and improper venue, or in the alternative to transfer venue brought by OMsignal, Inc. (“OMsignal”) filed in connection with the complaint of Sarvint Technologies, Inc. (“Sarvint”) in Case No. 1:15-cv-70-TCB in the United States District Court for the Northern District of Georgia, Atlanta Division.

Background Facts
Sarvint brought suit for infringement of U.S. Patent No. 6,970,731 (the ‘731 Patent) relating to a “smart shirt” that can unobtrusively measure a person’s vital signs without external wiring or electrode patches.  This “wearable motherboard” was developed at the Georgia Institute of Technology by Sarvint’s co-founders Dr. Sundaresan Jayaraman and Sungmee Park.  The ‘731 Patent was assigned by Sarvint’s cofounding inventors to Georgia Tech Research Corporation (“GTRC”) which then exclusively licensed it to Sarvint.  Sarvint accuses an OMsignal fitness shirt of infringing the ‘731 Patent.

The Court noted that Sarvint is headquartered in the district as is the owner GTRC.  OMsignal is based in and operated out of Montreal, Canada, with no “brick-and-mortar place of business” in Georgia.  OMsignal operates a standard e-commerce website and admits to selling accused products in Georgia.  OMsignal argued its contacts are minimal – no offices, places of business, employees, officers, directors, bank accounts, business records, real property, or registration in Georgia and that it has never traveled to the state.
Read more »

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Wednesday, July 15, 2015, 11:21 AM

Patent Case Transferred From Georgia, Plaintiff's Principal Place of Business, To California, Defendant's Principal Place of Business

Judge Amy Totenberg granted the motion brought by Noction, Inc. (“Noction”) to transfer the patent infringement action brought by Internap Corporation (“Internap”) to the Northern District of California.

The action was based on alleged infringement of one network routing technology patent owned by Internap and potential infringement of a second patent.  Both plaintiff and defendant are Delaware corporations with offices in the Northern District of California (the location of defendant’s principal place of business).  Internap’s principal place of business is in the Northern District of Georgia.
Judge Totenberg considered the nine factors set forth in Manuel v. Convergys Corp., 430 F.3d 1132, 1135 n.1 (11th Cir. 2005), reprinted below:
(1)  The convenience of the witnesses;  (2)  the location of relevant documents and the relative ease of access to sources of proof;  (3)  the convenience of the parties;  (4)  the locus of operative facts;  (5)  the availability of process to compel the attendance of unwilling witnesses;  (6)  the relative means of the parties;  (7)  a forum’s familiarity with the governing law;  (8)  the weight accorded a plaintiff’s choice of forum; and  (9) trial efficiency and the interests of justice, based on the totality of circumstances.

Judge Totenberg went on to note two ancillary rules of application: considerable discretion is afforded the trial judge and the choice of forum should not be disturbed unless the factors clearly outweighs the plaintiff’s choice of forum.
Judge Totenberg then did an analysis of each of the nine factors, detailing the pertinence of each factor to her decision and noting variations in consideration for each factor.  Her exercise is informative to other future litigants facing the prospect of bringing or defending a transfer motion.
For example, the Court noted that the convenience of witnesses is a most important factor and that the focus should be on key witnesses (party witnesses, customers, experts).  In considering those witnesses, non-party witnesses are less subject to compulsion or motivation and are, therefore, more appropriately focused on by the Court.  Evidence on the last location of non-party inventors and potential prior art witnesses led the Court to find this factor favored granting the motion.
With regard to the location of documents, the Court noted that the largely electronic nature of the likely documents to be relevant to the proceeding diminished the importance of this factor, but the fact that usually the alleged infringer’s documents are the most important to the case gave a slight preference to the Northern District of California.
On the convenience of the parties factor, the Court noted that the Internap office in California was not a real factor as the company employees likely to be involved in the action were located in the Georgia office.  The Court ruled this factor was merely neutral[1] as would shift the inconvenience from the Defendant to the Plaintiff.
With regard to locus of operating facts, the Court noted that research and development of the accused product took place in the Northern District of California, which is also the location of headquarters for a number of users of the product – thus making it the “center of gravity.”  See, e.g., In re Mayfonk, Inc., 554 F. App’x 943, 944 (Fed. Cir. 2014).  The fact that nationwide infringement included Georgia does not give rise to a preference for Georgia as a forum.
When examining the plaintiff’s choice of forum factor, the Court noted that this is somewhat muted by the weight of the locus of operative facts being outside that chosen forum.  This bleed-over of one factor into another was also noted in consideration of the final factor “trial efficiency and the interests of justice.”  Noting that neither party had cited concerns relating to delay, administrative difficulties, or prejudice, the Court evaluated factors that could make a case less expensive and faster (evidence access, witness availability, witness costs, and jury view possibilities) and found those factors favored transfer.
The considerable discretion afforded trial judges in ruling on motions to transfer allows Courts that are so inclined to hold on to cases that could be readily transferred.  Judge Totenberg showed no inclination to aggressively exercise this discretion noting that “there is no strong local interest in adjudicating this matter in the Northern District of Georgia.”  While this decision could encourage other defendants residing outside of Georgia to seek transfer of cases, it is also confirmatory of the equal access to justice afforded litigants in the Northern District of Georgia.
The Order was issued in Internap Corporation v. Noction, Inc., No. 1:14-cv-03872, in the U.S. District Court for the Northern District of Georgia, Atlanta Division, on June 29, 2015, by U.S. District Judge Amy Totenberg [Dkt. 30].

[1] However, when combined with the deference to the Plaintiff’s choice of forum, this factor could be argued to favor Plaintiff Internap.

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