The Software IP Report

Sanctions Denied Where Patent Plaintiff’s Theory of Infringement Was (Barely) Colorable

By Charles Bieneman

Categories: Software Patents, The Software IP Report

A plaintiff whose theory of patent infringement depended on reading the word “at” to mean “associated with” was not subject to sanctions for bringing suit, even though the court found “unconvincing” the “plaintiff’s advocacy of this unusual interpretation.”  NorthMobileTech LLC v. Simon Property Group, Inc., No. 11-cv-287 (W.D. Wisc. March 27, 2012).

The claims of the patent-in-suit, U.S. 7,805,130, included a recitation of “at a server system . . . determining that said mobile wireless communications device is located at a given shopping facility.”  The defendants had clearly explained to the plaintiff that their determination of a mobile device’s location occurred at the mobile device, and not at a server.  The plaintiff ignored this explanation, and argued that because the defendant used servers for some functionality, the defendant must use servers for location-determining.  The plaintiff also ignored the defendant’s suggestion that use of a mobile phone’s “airplane mode” could be easily used to demonstrate that location could be determined without a server.

The court nonetheless stated that “[h]owever surprising the court finds plaintiff’s failure to address defendants’ explanation, it would be inappropriate at this point to grant sanctions.”  Even though it appeared that the defendant did not literally infringe the patent-in-suit, “plaintiffs may yet be able to argue reasonably, or at least not frivolously, that each element of the patent is infringed via the doctrine of equivalents.”  The court thus could not “conclude, on the arguments before it, that plaintiff’s infringement claim had no hope of success.”  The defendant’s motion for sanctions was denied.