Chicago IP Attorney & Lawyer : R. David Donoghue : Chicago IP Litigation Blog

SP Techs., LLC v. Garmin Int'l., Inc., No. 08 C 3248, Slip Op. (N.D. Ill. Nov. 3, 2009) (Pallmeyer, J.).*

Judge Pallmeyer denied the individual inventor's ("Inventor) motion to intervene in this patent case.  Inventor sought to intervene in this case arguing that the assignment of his patent to plaintiff SP Technologies ("SPT") was invalid because SPT coerced Inventor to sign it.  The Court held that Inventor's argument was unpersuasive.  Inventor admitted signing the assignment, but argued it was under duress.  But the Court held that Inventor could not intervene, even if Inventor could prove the duress.  Inventor failed to explain why SPT would not adequately represent Inventor's interests in the case.  In fact, Inventor even agreed that his interests were aligned with SPT.  Intervention, therefore, was not proper.  Inventor was, however, free to pursue his claims in a separate suit against SPT.

*  Click here for more on this case in the Blog's archives.

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SP Techs., LLC v. Garmin Int'l., Inc., No. 08 C 3248, Slip Op. (N.D. Ill. Sep. 30, 2009) (Pallmeyer, J.)

Judge Pallmeyer denied defendants' motion for summary judgment of inequitable conduct in this patent infringement case. Plaintiff SP Technologies ("SPT") asserted a patent for a touch screen keyboard that cannot be moved, resized or closed by a user. Defendants argued the patent should be held unenforceable based upon the inventor's alleged failure to disclose to the Patent Office twenty lines of code for disabling a close button allegedly copied from a website and used in the patent, as well as certain alleged prior art Palm Pilot devices.

Intent to Deceive

The Court held there were questions of fact as to the investor's alleged intent to deceive the Patent Office as to both alleged pieces of prior art. With respect to the code, there was evidence that the inventor believed there was no need to submit any evidence about a portion of the code because only the entirety of the code was relevant to patenting. Regarding the Palm devices, the inventor believed he had disclosed the Palm Pilots because they were mentioned in articles submitted to the Patent Office. 

Materiality

Regarding the allegedly copied code, the Court noted that few inventors could be considered the sole inventor of every aspect of their invention. Almost all inventions include some known components. And defendants did not prove that the single component of the invention represented by the allegedly copied code was central to patentability. The Court did, however, note that it appeared the code was likely copied as it was identical to that on the website and in other manuals, down to a misspelling. The Court accepted as evidence a printout of a copy of the website at issue from the relevant 1999 date. The copy of this website was maintained by the Internet Archive, or the Way Back Machine. The printout was authenticated by an Internet Archive employee that explained the Internet Archive’s process of maintaining historic copies of websites.

Similarly, defendants did not present sufficient evidence of the materiality of the Palm devices. Defendants offered only pictures without proof, such as a manual, that a user could not move, resize or close the keyboard.

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SP Techs., LLC v. Garmin Int’l, Inc., No. 08 C 3248, Slip Op. (N.D. Ill. Oct. 9, 2009) (Pallmeyer, J.).

Judge Pallmeyer construed the claims of plaintiff SP Technologies' (“SPT”) patent to a method for inputting data on a touch-screen display using a keyboard that cannot be resized, moved or closed by a user. As an initial matter, the Court noted that, contrary to SPT’s argument, the Court was not required to consider the accused products when construing the claims. Instead, the Court had discretion to consider the accused devices. And because the parties did not provide a reason to consider them, the Court chose not to include the accused products in its analysis. Here are constructions of note:

• “Plurality of date input fields” was defined as more than one field, but the fields need not simultaneously appear on the same screen.

• “Termination” referred to terminating or closing the keyboard, but not resizing or moving the keyboard as defendants argued. The ordinary meaning of terminate controlled over some statements the inventor made during prosecution that could have been read more broadly.

• “Derived input” was defined as information requested by a computer application or program, as opposed to information “desired” by a user.

Finally, the Court noted a problem with the defendants’ presentation of the evidence that will be remedied by the Local Patent Rules. Defendants cited to documents within the prosecution history by title, as opposed to using Bates numbers, making it hard for the Court to find the relevant portions of the 250 page prosecution history.  Local Patent Rule 4 requires that parties file a Joint Appendix as part of the claim construction process that is paginated and includes the prosecution history, among other documents. Click here for much more on the Local Patent Rules in the Blog’s archives.

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