The Software IP Report

Fed. Cir. Affirms Invalidity Findings By E.D. Texas Jury

By Charles Bieneman

Categories: 35 U.S.C. § 112, 35 U.S.C. §§ 102, 103, The Software IP Report

Claims from four patents were infringed, but invalid as anticipated and obvious, a jury in the Eastern District of Texas found. In an opinion by Chief Judge Rader, the Federal Circuit rejected the patent owner’s challenge to the jury verdict as a matter of law, and also rejected its request for a new trial. Ceats, Inc. v. Continental Airlines, Inc., No. 2012-1614 (Fed. Cir. April 26, 2013).

CEATs, Inc. had alleged that various airlines and online reservation companies infringed U.S. Patent Nos. 7,454,361,7,548,866, 7,660,728, and 7,548,869. The patents were directed to “providing information over a network about the availability of seats at an event or on a plane flight, and permitting the user to select or purchase the seats of his choice.” One patent was directed specifically to selecting airline seats. Another recited “information relating to ‘sets of individual seats.'” In contrast, other patents recite information related to a “plurality of available individual seats.”

At trial, the defendants focused on Microsoft’s Expedia, which indisputedly was publicly used prior to the priority date of the patents-in-suit. Expedia, as some of us old folks may recall, “was [and is] an online travel reservation system that permitted customers to buy plane tickets and to select their seats online.” The core dispute at trial was whether Expedia had “mouse-over” functionality as recited in the patent claims. The defendants had presented testimony of two Microsoft engineers that Expedia’s “Seat Pinpointer” included mouse-over functionality. The patent owner contended that this testimony was not sufficiently corroborated.

The so-called Barbed-Wire doctrine requires corroboration “of any witness whose testimony alone is asserted to invalidate a patent.” (Quoting TypeRight Keyboard Corp. v.Microsoft Corp., 374 F.3d 1151, 1159 (Fed. Cir. 2004)). The doctrine is intended to prevent testifying inventors from remembering “facts favorable to their case by the lure of protecting their patent or defeating another’s patent.” Sufficiency of corroborating evidence may be determined by:

a variety of factors including: (1) the relationship between the corroborating witness and the alleged prior user; (2) the time period between the event and trial; (3) the interest of the corroborating witness in the subject matter in suit; (4) the record’s showing of contradiction or impeachment of the witness’s testimony; (5) the extent and details of the corroborating testimony; (6) the witness’s familiarity with the subject matter of the patented invention and the prior use; (7) the probability that a prior use could occur considering the state of the art at the time; and (8) the impact of the invention on the industry and the commercial value of its practice.

Here, the engineers’ testimony was corroborated. A “test specification and the usability study videos (which predate Expedia 2.0’s release) coupled with the testing checklist (which postdates the release) sufficiently corroborate[d] the proffered testimony.” The patent owner’s argument that the testimony was not corroborated was rejected; referring back to the above factors, the court explained that “[c]orroboration is a rule of reason.”

The court also thought that there was sufficient evidence to find that the “set of seats” limitation was supported by the evidence. The corroborated prior art “showed users adding individual seats to a list of selected seats.” A single item could constitute a set. (Judge Schall dissented on this point, arguing that a “set” was two or more.)

The patent owner also argued “that part of the jury instruction regarding prior invention under former35 U.S.C. § 102(g)(2) was incorrect because it did not explicitly state that an alleged prior inventor must make the alleged invention public after conception and reduction to practice.” That is, “the jury was allowed to find the patent anticipated on the basis of “‘secret prior art.'” The court rejected this argument. Even if not a model of clarity, the trial court’s instruction “made clear that a prior invention that was abandoned, suppressed, or concealed could not anticipate.”