Aba section of Intellectual Property Law

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ABA Section of Intellectual Property Law

Division VII – Information Technology

Final Report

August 5, 2008
Marc K. Temin, Division Chair
Division Chair Summary of Committee Activities

COMMITTEE 701 – SOFTWARE TECHNOLOGY, George W. Jordan, III, and Kelly G. Hyndman, Co-Chairs. The Committee provided brief discussions of developments relating to obviousness after the KSR decision and software patentability. It submitted a proposal for a program at the Annual Meeting, but the program was not selected. The Committee is providing case reports in its area for the Annual Review. The Committee also outlined topics for a planned practical guide on software inventions and patents for engineers and non-patent lawyers.

No report was submitted by Committee 705, Computer and Internet Legislation.

COMMITTEE 706 – COMPUTER HARDWARE AND TECHNOLOGY, Mark Campagna and Aaron Charfoos, Co-Chairs. The Committee provided detailed reports of cases in its area. The Subcommittee on CLE Programs, chaired by Aaron Charfoos, presented an enlightening and well attended program at the Spring 2008 Section meeting on computer fraud and crime, nationally and internationally. The Committee also provided a detailed Computer Hardware Manufacturing Contract Checklist.

COMMITTEE 709 – SOFTWARE DEVELOPMENT AND LICENSING, Mark Wittow and Gloria Archuleta, Co-Chairs. The Committee will present at the Annual Meeting a panel discussion about current open source software issues, including adoption of the GPL v3 license, recent litigation filed to enforce the terms of open source software licenses, and assessment of internal company best practices regarding open source software use. The Committee also prepared for the Annual Review reports covering software development and licensing decisions from Jan. 2006 to April 2008.

COMMITTEE 710 – DATABASES AND E-COMMERCE, Brian N. Larson, Chair. The Committee produced detailed reports on cases and developments relating to fair use and compilations of copyright-protected works, copyright registration as a prerequisite to suit, common law misappropriation and databases, contractual limitations on uses of databases, search engines, and privacy and the First Amendment in e-commerce. Modified versions of those reports were provided for the Annual Review.

COMMITTEE 711 – ONLINE SECURITY & E-PRIVACY, R. Mark Field and Michael A. Parks, Co-Chairs. The Committee will present a discussion on US, EU and APEC approaches to data breach notification law and policy at the ABA Section of International Law’s 2008 Fall Meeting in September in Brussels. The Subcommittee on Spyware, co-chaired by Renard Francois and Mo Syed, submitted a report discussing controversies about the appropriate definition of “spyware,” existing federal legislation applicable to spyware, pending federal spyware legislation, federal administrative and court action relating to spyware by the Federal Trade Commission and Department of Justice, state spyware legislation, and issues for further consideration by the Section. Rebecca Piper provided a detailed update on state credit freeze and credit security legislation since the Committee’s report on that issue last year.

COMMITTEE 758 – SPECIAL COMMITTEE ON COMPUTER GAMING, Ross Dannenberg and Stephen Mortinger, Co-Chairs. The Committee is preparing a monograph on intellectual property law issues in computer gaming and virtual worlds. A draft table of contents is included with its report. At the Spring 2008 Section meeting the Subcommittee on CLE Programs, chaired by Catherine Intravia and Stephen Davidson, presented, along with the Science & Technology Section’s Committee on Virtual Worlds, an entertaining and well attended program on intellectual property law issues in virtual worlds. In July the Committee presented, within Second Life, a program on legal issues in virtual worlds The Committee will also be presenting a program at the Annual Meeting on “real issues in virtual worlds.” The Committee also provided detailed reports of significant cases relating to gaming, virtual worlds, and related issues. The Committee is also creating a “Fact Sheet” for practitioners on intellectual property issues relating to virtual worlds.


George W. Jordan, III and Kelly G. Hyndman, Co-Chairs
Scope of Committee: All intellectual property issues relating to software technology with the exception of software development, licensing, legislation, databases, e-commerce, online security and privacy issues, which are addressed by other committees in Division VII.
SUBCOMMITTEE A Stephen Y. Chow & David Blau, Co-Chairs
Past Action. N/A.
Discussion. Subcommittee A is tasked with monitoring and reporting on the effects of KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727 (2007) on the granting and enforcing of patents for software-related inventions. During the first six months following the decision, reported obviousness decisions against patentees outnumbered reported obviousness decisions favoring patentees by two-to-one. In a much smaller sampling of decisions in the computer arts however, accused infringers prevailed in every three out of four cases. Notably, the PTO has issued changes to the M.P.E.P. to offer guidance to examiners on the application of the principles introduced in the KSR decision. The subcommittee may also consider “peer-review” of applications and the “inventive step” requirement as applied to inventions that involve the use of software.
SUBCOMMITTEE B David Cox & Vince Cogan, Subcommittee Chairs
Past Action. N/A.
Discussion. Subcommittee B addresses issues surrounding patentable subject matter in software and information technologies under 35 U.S.C. § 101. Though most of the judicial activity surrounding section 101 revolves around business method patents (and applications), many of the business methods incorporate or rely upon software or information technology for their implementation.
Cases such as In re Nuijten (dealing with signals), In re Comiskey (dealing with online arbitration), and In re Bilsky (currently on review at the CAFC – dealing with a non-technological method patent) test the limits of section 101. In contrast, the proposed Patent Reform Act is relatively silent on the issues of patentable subject matter, emphasizing the role of courts in determining subject matter eligibility under section 101.
The subcommittee met to discuss possible topics to address this year. Three areas of interest were identified for a panel discussion: (1) patentability of artistic elements of software, (2) patentability of software and methods in virtual communities (a subject also being addressed by committee 705), and (3) signals as patentable subject matter (building on our report from last year). The first two subjects, while novel, did not produce fruitful grounds for further inquiry. A proposal was developed and submitted for a panel at the upcoming ABA meeting (see attached). Given the proposal was not selected, the committee has focused on preparing summaries of the three aforementioned cases for the Annual Review.
SUBCOMMITTEE C David M. Shofi & George W. Jordan III, Co-Chairs
Past Action. N/A.
Discussion. Subcommittee C was created to monitor software litigation trends involving intellectual property issues to the extent such trends are not being monitored by other committees. For example, the subcommittee plans to monitor the subsequent history of the AT&T v. Microsoft decision concerning software patent extraterritoriality. The subcommittee has agreed to draft a legal development submission on the case for the Section’s Annual Review of Intellectual Property Law Developments. It is understood that Committee 709 will be tracking open source software litigation developments.
SUBCOMMITTEE D Elizabeth Bowles & Thomas Jackson, Co-Chairs
Past Action. N/A.
Discussion. Subcommittee D intends to prepare a practical guide on software inventions and patents for engineers and non-patent lawyers. The guide ultimately will contain several “primers” with software patent information as well as, hopefully, an interactive CD-Rom or DVD containing related content, such as forms, checklists, and mock interviews. Below is a treatment of chapter topics:
Introduction: So you think you want a patent? Fundamental considerations when making this decision.
Chapter 1: Checklist of things one should look for if considering whether to seek a software patent.

(a) Tips for preparing the software-related patent application

(b) Things to consider if you are hiring outside counsel


Chapter 2: The novelty requirement -- how to communicate with inventors to thoroughly "suss out" the novelty of a piece of software.

Chapter 3: How to track the date of conception. How experimental use and date of reduction to practice apply to software development.


Chapter 4: Improvements:  How this works in the software context and how KSR impacts the analysis.

Chapter 5: Beta testing and disclosure:  How to beta test without starting the clock on the filing period.


Chapter 6: Confidentiality:  when and whether to disclose all or part of the source code or use "pseudo" code. How does this overlap with copyright? What implications does this have for trade secrets?


Chapter 7: Non-publication considerations with patent applications and the implications of seeking international patent protection absent a non-publication withdrawal (e.g., if you intend to seek an international patent, it is necessary to publish.).


Chapter 8: Practical tips on responding to office actions and dealing with examiners.

Chapter 9: Filing and drafting considerations with provisional applications.
Chapter 10: International Patent Protection: When should you seek international protection and what are the extraterritorial issues with a U.S. patent. What you should do to protect your international patent rights.
Chapter 11: Options for shortening the time frame and speeding up the process: e.g. Peer to Patent project.
Appendix I: Timeline of an Application from filing to issuance. How long this takes (4-5 years), how many applications are filed (30,000-40,000), how long it will take to get your first Office Action denying your claim(s).
Appendix II: Summary of what to expect – e.g. that the PTO will issue an initial Office Action denying your claim(s) as a matter of course – and what happens next.
Members approving report:

Mark Ashton

Gerry Elman

Geoffrey D. Pinski

Frederic D. Bellamy

Jason Goldberg

Woodrow Pollack

Jeffrey Berkowitz

Richard A. Gollhofer

Bryan Proctor

Charles A. Bieneman

Kelly Hyndman

Stephen Rubin

Jennifer S. Bisk

Thomas G. Jackson

Dean Scharnhorst

David E. Blau

George W. Jordan, III

David M. Shofi

Lara Elizabeth Bowles

James A. LaBarre

Michael Storck

Harold L. Burstyn

Andrew P. Lahser

Robert D. Summers, Jr.

Thad Chaloemtiarana

Theodore V. Lapus

Mohammad A. Syed

Michael J. Cherskov

Bruce D. Lathrop

Oscar Tobar

Stephen Chow

Matthew Levy

Mark Webbink

Vincent Cogan

Randolph R. Lowell

Mark H. Wittow

David T. Cox

Allen Mass

Natalya Dvorson

Elizabeth S. McClure

Members disapproving report:

Members approving report in part:
Members explicitly abstaining:
Members not heard from:

Mary Ann C. Ball

Eugene F. Friedman

Amanda M. Morris

David Alan Bateman

Horacio Gutierrez

Stephen B. Perkins

Jennifer Brooks

Leonard T. Guzman

Ameloa Porges

Mark R. Brown

Yi Hou

Jay L. Raftery, Jr.

Yar R. Chaikovsky

Douglas M. Isenberg

John Sieman

Peter Corcoran

Jacqueline Klosek

Michael T. Stewart

Adriana De La Torriente

Christopher K. larus

Robert J. Talbot, Jr.

Nirav N. DeSai

Mark Lyon

Barbara Wilkey

Kenneth Kyle Dort

Patrick W. Ma

Jeffrey N. Zinn

Eric Neil Everett

Patrick Joseph McDermott

Law student members:

Matthew Asbell

Stephen Ball

Jennifer A. Bernstein

Keith Bae

Jon Bartelson

Charles Blazer

Yi-Hung Chung

Donald M. Lumpkins

Stacey A. Scorza

Thomas Cushing

Jason Luros

Amy Yun Song

Nelson DaCunha

Ryan McCleary

Kurt Stecher

Eugene Goryunov

Lynne Myhre

Jeffrey L. Vagle

Megan Hall

Christopher P. Neahring

Dondi West

Herbert M. Hill

Phillip N. Padden

Jennifer Ying

Ben Kleinman

Scott Powell

Associate member particpants:

Farnaz Alemi

Karl Jon Barnfather

Lalit Chauhan

Dirceu P. Santa Rosa

Trevor Smedley

Graham Smith

Ajay Verma

Bruce F. Webster

Committee 706 Computer Hardware Technology

Mark V. Campagna and Aaron Charfoos, Co-Chairs

Scope of Committee: Intellectual property issues related to computer hardware technology which do not relate directly to the work of another committee.
Subcommittee A: 2006 CASE LAW UPDATE

Mark Campagna and Edward LaBarr, Co-Chairs

Past Action. None.
Discussion: We have summarized recent cases involving IP issues related to computer hardware technology.
In Hutchins v. Zoll Medical Corp., 492 F.3d 1377 (Fed. Cir. 2007), the court held that a RISC microprocessor in a computer-assisted CPR device was not a “general purpose computer” as that term was used in a patent because a RISC microprocessor has only limited functionality. Id. at 1381. Accordingly, the court found no infringement of the claim. During prosecution, the patentee distinguished the invention from prior art that showed similar devices with dedicated microprocessor units (as opposed to general purpose microprocessors). Id. Amending the claims in response to the PTO rejection created an estoppel prohibiting the patentee from recovering subject matter disclaimed during prosecution. Id.
In Altera Corporation v. Clear Logic, Inc., 424 F.3d 1079 (9th Cir. 2005), the dispute related to the Semiconductor Chip Protection Act of 1984, 17 U.S.C. §§ 901-14 (“SCPA”), which protects mask works embodied in semiconductor chips. “[A] person may be liable for copying a part of a mask work if it is a qualitatively important portion that results in substantial similarity.” Id. at 1084. The court used the levels of abstraction test to identify the distinction between ideas and expression. Id. at 1085. The court identified the broad idea behind the design and assessed “each successive step in the design process, identifying the point at which the idea becomes protectable expression.” Id. A mask work is structured according to the groupings of transistors and interconnection lines. Id. “The placement of logic groupings in a mask work is not an abstract concept; it is embodied in the chip and affects the chip’s performance and efficiency as well as the chip’s timing.” Id. at 1086. Therefore, the Court held that the organization of the groupings of logic functions on the mask work and the interconnections between them were protected under the SCPA. Id.

The SCPA excludes reverse engineering from infringement because of the “substantial toil and investment” in creating the second mask work, so long as the “second mask work is not substantially identical to the original.” Id. The reverse engineering provision allows copying the entire mask work, it does not distinguish between protectable and non-protectable elements of the chip as long as the copying is for the purpose of teaching, evaluation, or analyzing the chip. Id. at 1088. The Court’s jury instruction on this point (that legitimate reverse engineering only allows copying of non-protectable concepts or techniques), although incorrect, was not prejudicial error. Accordingly, the jury’s infringement finding was affirmed.

In CNET Networks, Inc. v. Etilize, Inc., 2007 WL 4208362 (N.D. Cal 2007), the court reviewed whether a patent relating to automatically creating an electronic catalog of product information gathered from various internet websites was infringed. Etilize-Pakistan employs human operators in Pakistan who visit vendor websites to collect relevant product information and enter it into a template that is then entered into the catalog. Id. at *2. Etilize moved for summary judgment of non-infringement because (1) neither it nor its customers “use” the claimed system in the United States, as required under section 271(a), and (2) the catalog it imports into the United States is not a “product” within the meaning of section 271(g). “Use of a system claim, however, may give rise to infringement under section 271(a) if this country is “the place at which the system as a whole is put into service,” in other words, the United States is “the place where control of the system is exercised and beneficial use of the system obtained.” Id. at *3 (citing NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 1317 (Fed. Cir. 2005). Because the system claims relate to aggregating product information and creating a product catalog, the fact that the customer downloads the catalog in the U.S. is insufficient. Id. at *4. Even though the catalog was stored on a server in the U.S., the system claims are not infringed because “overall control of the data collection and catalog creation is exercised from Pakistan.” Id. at *5. Thus, Etilize-Pakistan does not directly infringe the system claims and Etilize does not indirectly infringe because there is no direct infringement. Id.

The court further found that the electronic catalog is a “product” within the meaning of section 271(g), and is made by the patented CNET process and is imported and used in the U.S. Therefore, the court denied Etilize’s motion for summary judgment of non-infringement. Id. at *8.
In Maurice Mitchell Innovations, L.P. v. Intel Corp., 2007 WL 2777968 (Fed. Cir. 2007), the court held that a claim reciting “means for causing said first and second switch means to remain in said non signal-conducting state …” lacked corresponding structure under 35 U.S.C. § 112, ¶ 6. Id. at 187-88. Although the specification disclosed the MCS6520 Peripheral Interface Adaptor, this complex integrated circuit chip includes numerous circuits that function as an interface between a microprocessor and peripheral devices like printers, displays and the like. Id. Although the MCS6520 contains tri-state circuitry, the specification does not identify the tri-state circuits as the structure that performs the “means for causing” limitation. Id. at 188. The corresponding structure “must be disclosed in the written description in such a manner that one skilled in the art will know and understand what structure corresponds to the means limitation.” Id. Therefore, the court held that claim 1 was indefinite under 35 U.S.C. § 112, ¶ 2. Id.
In Technology Properties Ltd. v. Matsushita Elec. Indus. Co., Ltd., 514 F.Supp.2d 916 (E.D. Tex. 2007), the court construed, inter alia, “central processing unit” (CPU) as “an electronic circuit on an integrated circuit that controls the interpretation and execution of programmed instructions.” Id. at 925. The court declined to limit the CPU in this case to use in a computer or to a sole or central electronic circuit, citing the specification’s recital of HDTV, automobile and multiprocessor applications. Id.

In considering the construction of “microprocessor” in this case, the court declined to limit a microprocessor to circuits including input/output circuitry, or to circuits containing a CPU. Id.

In construing “ring oscillator,” the court required a multiple odd number of inverting logic stages connected in a loop despite defendant’s reference to an extrinsic semiconductor textbook depicting a ring oscillator with only one inverter. The court was persuaded by plaintiff’s argument that a single inverter could not maintain an oscillating output, as well as language in the extrinsic source that taught “chains of inverters,” not just one inverter. Id. at 925-26.
In Computer Acceleration Corp. v. Microsoft Corp., 2007 WL 1371660 (E.D. Tex. 2007), the court construed the means-plus-function claim limitation: “means for detecting that the first processor is executing a launch sequence for initializing the computer program, wherein during the launch sequence, contents of physical address blocks of the secondary storage device at which portions of the computer program are stored are copied to the primary storage device.” Id. at *10.

The court disagreed with the patent holder’s proposed corresponding structures: “software that monitors computer activity to determine when a computer program is being launched” and “computer activity is monitored to determine when a computer program is being launched” (Id. at *10) because “the requirement to disclose structure when the function is implemented by a computer does not require the patentee to disclose exactly what mathematical algorithm will be used ....” Id. at *11 (citing In re Dossel, 115 F.3d at 946).

The court reasoned that the proposed structure “tells the reader virtually nothing about the limits of this claim language. It would include any and all software which could accomplish the function in any way.” Id. at *11. The court differentiated Dossel, stating: “While not a precise mathematical formula or flow chart, [the description in Dossel] is far more detailed than the bare repetition of the function in the claim term now at issue in the [instant] patent.” Id. Particularly, the Dossel specification discloses “computes, from the received data, the current distribution by mathematical operations including a matrix inversion or pseudo inversion, and then outputs the result to a display” and “‘known algorithm’ could be used to solve the standard equations which are known in the art.” Id. (citing Dossel at 946).

The court ultimately construed the claim as requiring the following structure: “According to one embodiment an interrupt is generated each time a file is opened. The interrupt service routine in effect hooks into the operating system to determine that a program is being launched. Specifically, the interrupt service routine checks to see if the file is being opened with an ‘execute’ privilege.” Id. at *11 (citing U.S. Pat. No. 5,933,630).

In Chamberlain Group, Inc. v. Lear Corp., 2007 WL 1238908 (N.D. Ill. 2007), defendants moved to stay, pending appeal to the Federal Circuit, a preliminary injunction granted on the basis of a prior Markman hearing. Id. at *2 In analyzing the likelihood of success on the merits, the court addressed Lear’s argument that the court “misapplied [its] construction of ‘binary code’ to its product.” Id. at *3.

Defendants contended that the court erred in finding both that their product made use of a “binary code” and that the product made use of a binary or trinary code generator to convert binary code to trinary code. Id. at *2. At the Markman hearing, the court construed “binary” to mean “a code in which each code element may be either of two distinct kinds of values, which code may represent various kinds of letters and numbers including, but not limited to, a representation of a base 2 number.” Id. at *3. Defendants’ argued that “each of its trinary code digits (trinary being composed of three digits, usually 0, 1 and 2) is represented by a two-bit sequence: 0 = 00, 1 = 01, and 2 = 10. Id. at *3. Then, by example, the trinary number “1102” is represented as 01-01-00-10. Id. at *3. When strung together, the code reads “01010010.” Id. Defendant argued that just because code is composed of 0s and 1s does not mean that it is a binary code. Id.

Disagreeing with the defendants, the court reasoned that its prior construction of the term “binary code” in plaintiff’s patent covers any code “composed of two distinct kinds of values - in [defendant’s] example, 0s and 1s.” Id. Thus, defendant’s code, while it may represent a trinary number, remains a binary code under [the Court’s] definition. Id. at *3 (emphasis added). The Court cited The IEEE Standard Dictionary of Electrical and Electronics Terms, Sixth Edition, as defining “binary code” as “A code that makes use of members of an alphabet containing exactly two characters, usually 0 and 1.” Id.

In conclusion, the court found no strong likelihood of success on the merits. “[A] trinary number system, as stored in a computer, is another one of many binary codes. As computers, by their very nature, work on alternating electrical charges (i.e., charged or uncharged) ... a processor only operates on binary data ....” Id.

In Kernius v. International Electronics, Inc., 2007 WL 1040571 (D. Md. 2007), the court construed the claim term “Call Progress Detector Circuitry for Detecting a Call Waiting Signal.” Id. at *3. Specifically, “[t]he parties’ dispute hinges on whether the claim term ‘circuitry’ excludes ‘software based implementations, such as firmware or a microcontroller that may be programmed with software for accomplishing a particular task.” Id. at *3.

The Court discussed two CAFC cases in reaching its conclusion. In Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311 (Fed. Cir. 2004), the CAFC held “[W]hen the structure-connoting term ‘circuit’ is coupled with a description of the circuit’s operation, sufficient structural meaning generally will be conveyed to persons of ordinary skill in the art, and §112 ¶ 6 presumptively will not apply.” Id. at *4 (citing Linear Tech., 379 F.3d at 1320. In Massachusetts Instit. of Tech. v. Abacus Software, 462 F.3d 1344 (Fed. Cir. 2006), “the parties disputed whether the term ‘aesthetic correction circuitry’ connoted sufficient structure to avoid § 112 ¶ 6 treatment.” Id. (citing Abacus Software, 462 F.3d at 1355). The Federal Circuit also rejected the plaintiff’s argument that “aesthetic correction circuitry” includes both hardware and software. Id. “Although the specification suggests that certain computation performed by the [Color Translation Module] can be accomplished with either hardware or software ... [w]e conclude that the term ‘circuitry’ in claim 1 is limited to hardware.” Id. at *4.

However, the court found that these cases were not conclusive on the issue of whether the term “circuitry” includes hardware but does not extend to so-called “software based implementations ….” Id. In Abacus Software, the Federal Circuit concluded that “circuitry” excludes software, 462 F.3d at 1357, but did not consider whether that term also excludes “software based implementations.” Id.

The court found that “there is no reasonable dispute that the specification and prosecution history of the ‘771 Patent use the term ‘circuitry’ to refer to programmable microcontroller 412.” Id. “[E]ven if Defendants were correct that one of ordinary skill in the art would understand the claim term ‘circuitry’ to exclude software based implementations, the written description and prosecution history use that term ‘in a manner clearly inconsistent with the ordinary meaning.’” Id. at *5 (citation omitted).

In 3Com Corp. v. D-Link Systems, Inc., 2007 WL 949596 (N.D. Cal. 2007), the Court addressed a discovery dispute where Plaintiff demanded further technical information related to the internal design and operation of accused products. Id. at *3. Plaintiff sought the technical information because the court’s claim construction further defined physical design elements of an infringing product. Id.

Defendant argued that it should not be forced to produce VHDL code as it already produced “netlist codes” that identify all components in the accused products. Id. Defendant did not dispute the fundamental relevance of the VHDL code, “netlist codes” and the related technical information detailing the internal design and operation of the accused chips. Id. Accordingly, the court found that the Plaintiff should not have to rely upon Defendant’s selective representations and that Defendant’s partial production did not render further production irrelevant. Id. (citing FRCP 34(a)(1), which requires production of “any [relevant] documents” designated by discovering party); Buycks-Roberson v. Citibank Fed. Sav. Bank, 162 F.R.D. 338, 341-42 (N.D. Ill. 1995). The court further suggested that if the Defendant sought to avoid what it considered an unreasonable burden, it could have filed a motion for protective order under FRCP 26(c). Id.

In Juniper Networks, Inc. v. Toshiba America, Inc., 2007 WL 1192308 (E.D. Tex. 2007), the court construed the term “storing” to include both loading and holding data, despite the patentee’s use of “load” and “store” to refer to two different actions. Id. at *5. The term in dispute was “storing at least one timing control bit in a control register.” Id.

The Defendant contended that the patentee used “load” and “store” to refer to two different actions in the specification and, therefore, they must mean different things. Id. (citing U.S. Pat. No. 5,418,924 at 1:55-56, 2:12-14) (“The means for programming preferably comprises means for storing one or more timing control bits ...” and “The timing control bits are preferably loaded into a control register in the memory controller during initialization of the system.”). According to the defendant, construing “storing” to include “loading” would not make sense in Claim 1 (the apparatus claim) because a memory controller cannot load something into itself.

Plaintiff argued that that “loading” is necessary because programming requires the system to load data into the control register. Id. at *5. According to the plaintiff, simply “holding” values is passive because it requires no action whereas “storing” requires data to be “placed” in a particular location. Id. To support its contention that “storing” includes “loading,” plaintiff pointed to the Summary of the Invention, which states that “timing control bits are preferably loaded into a control register” and the Description of the Preferred Embodiment, which states that the information stored in the control register is taken or “loaded” from a read only memory. Id. (citing ‘924 patent, 2:12-14, 3:23-25; 4:16-19).

In agreeing with Plaintiff, the court noted: “Although the same terms in different claims are typically given the same meaning, the same terms in different types of claims may be given different meaning.” Id. at *5 (citing Epcon Gas Systems, Inc. v. Bauer Compressors, Inc., 279 F.3d 1022, 1031 (Fed. Cir. 2002) (stating that the same term used in a different manner in two phrases does not necessarily have to be interpreted to mean the same thing in both phrases)). “In this case, Claim 1 involves a means plus function claim whereas Claim 7 is a method claim. A means plus function claim is limited to the disclosed embodiment while a method claim is not so limited. Furthermore, one of ordinary skill in the art would understand that the term ‘storing’ in the context of programming involves ‘loading and holding.’ It would be difficult for a register to hold a control bit without first having it loaded.” Id.

In TGIP, Inc. v. AT&T Corp., 2007 WL 3194125 (E.D. Tex. 2007), the court reviewed a JMOL ruling that plaintiff failed to prove infringement related to a system and method of recharging a calling card. The patentee argued that there was “evidence that AT&T had at one time produced a product known as Datawave cards, for a previous customer that could be activated with a variable amount on a specialized system.” Id. at *6. Defendant argued that there was “no evidence that AT&T’s normally configured system-as it actually existed during the relevant period and as used for the cards shown to be offered during the relevant period-allowed a retailer to enter a variable initial activation amount.” Id. The court held that although “a device is ‘capable of being modified to operate in an infringing manner is not sufficient, by itself, to support a finding of infringement.’ The device must be ‘reasonably capable’ of a use that infringes the patent.” Id. at *7 (internal citations omitted). Although AT&T could reprogram the computerized system in ways that would infringe the claim, that is not sufficient for infringement. Id. at *8. There was “no evidence that AT&T deliberately sold or used a system that was intended to be altered to read on one or more of the claims in suit.” Id. A skilled programmer can “alter or rewrite programs of a general purpose computer to do almost anything computers can do. That does not mean that all computer-dependent systems are designed to be altered so as to infringe on every patent that incorporates a general purpose computer.” Id.
In Eaton Corp. v. ZF Meritor LLC, 2007 WL 2822775 (E.D. Mich. 2007), the court held certain claims invalid as obvious over the prior art. Claim 15 dealt with the problem of wheel lockup in a moving truck by prohibiting the central processing unit from generating transmission gear change command signals during wheel lockup. Id. at *1. The prior art reference taught the “use of additional blocking circuitry to block signals that have been generated by the processing unit in response to a wheel lock-up condition.” Id. at *4. Plaintiff’s expert argued that the reference did not “render the teachings of the 279 patent obvious because it fails to teach the function on claim 15 of ‘prohibiting said processing unit from generating all transmission gear change command output signals.’” Id. However, the ‘279 patent explicitly acknowledged “that the processing unit may include analog or digital electronic hardware as an alternative to a microprocessor.” Id. Moreover, the reference “prevents not only unsafe or undesirable shifts, it prevents all shifts.” Id. Thus, the court found that claim 15 was a predictable variation on the teachings of the prior art. Id. The second reference, Magnusson, was properly combined with the first because “the teaching in Magnusson of shifting to neutral does not teach away from disengaging the clutch.” Id. at *5. Disengaging the clutch would have been a predictable variation on Magnusson’s teaching to shift to neutral.” Id.
In Keithley v. Homestore.com, Inc., 2007 WL 2701337, (N.D. Cal. 2007), the court found that the term “file server means” was not subject to means-plus-function analysis. Rather, the dictionary definitions of “server” and “file server” connoted inherent structure. Id. at *20. Therefore, the section 112(6) presumption did not apply to the term “file server means” and the term was not limited to the corresponding algorithmic structure described in the specification. Id.
In USA Video technology v. Time Warner Cable, Inc., 2007 WL 4365772 (E.D. Tex. 2007), the court issued a claim construction order concerning a patent that related to video-on-demand technology. Defendant argued that the term “request interface” was limited to a hardware device. The court ruled, however, that the term “interface” encompasses both hardware and software connections. Id. at *9. The court relied on two technical dictionaries in reaching this conclusion. Id. The court ruled that the term means “the connection that permits data to be conveyed from the telephone network to the central processor.” Id. at *10.

Subcommittee B: CLE Program: IP issues involving computers and semiconductors

Aaron D. Charfoos, Chair
Past Action. None.

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