• Novell changes all of its IP indemnification the same day (which it has named "Technology Assurance Program" as contrasted with Red Hat's Open Source Assurance Program Novell apparently isn't interested in assuring open source, just technology ;-);
• Novell's new program notes a change in the Microsoft/Novell deal that covers GPLv3 code distributed by Novell for downstream recipients.

Hmm....I forget sometimes who is on which team, but it certainly seems like two sides have been conspiring on this, and I don't mean IP Innovation and Microsoft (which is almost a given).

So, here's my question: what is Novell talking about? How can we believe that Microsoft has agreed to indemnify GPLv3 code, when it has publicly stated it would rather leap off the Grand Canyon than touch it with a pinky? If they indemnify, it will, according to the authors of the GPLv3, spread the protection to everyone, not just Novell customers. I simply don't believe this is what Microsoft intends, at least not unless Microsoft says it.

So, while we wait, let's talk prior art. From all I can learn, there's no harm in looking for it in this fact pattern. So let's do. It'll be part of our education in patents. I thought in our continuing quest for knowledge, you might like to read a case IP Innovation lost. So here it is, IP Innovation LLC v. ECollege.com et al [PDF]. The reason I thought it was worth publishing here is that Appeals Court, the one specially set up to handle patent infringement appeals, explains a bit about how to know if a patent matches someone's product or not.

It's a 2005 case, so a lot has happened in the meantime. Oh, and if you are looking for prior art, the patent to look at first would be the oldest one of the ones IP Innovation has claimed in the Red Hat litigation. That is the one that I think needs to be knocked out either by prior art or by obviousness. The court here explains that it's a two step process of analysis:

"Step one, claim construction, is a question of law, that we review de novo. Step two, comparison of the claims to the accused device, is a question of fact, and requires a determination that every claim limitation or its equivalent be found in the accused device."

What's a "claim limitation"? If a patent is for a doohickey "embeddeed in a series of interrelated screens", that is the limitation, the embedded language. If your doohickey isn't embedded in a series of interrelated screens, it doesn't match up with the patent on that point, and every claim limitation has to be found in your device or it isn't infringing. That's what I get from this ruling. So take a look and extrapolate to the patents in the current case.

Here's a tutorial that may help: What are claims? [mp3] And here's another, "How to determine a patent's date [mp3]. And here's a helpful page, "When is something prior art against a patent? ("Prior art basically means any disclosure of the contents of a claim, prior to the application for patent....only documents published before the filing date of the application in question are considered."). Finally, here's Determining the scope of a patent. Unfortunately we have to read all this junk to find useful prior art. It's detailed and precise as to what is killer prior art and what isn't, so if we want to find the good stuff, we have to know what the good stuff means in this crazy patent regime's thinking.

It will probably drive you nuts to read this ruling, even though IP Innovation lost. It drives me nuts to listen to a court trying to decide if an HTML link is patentable. And indeed the issue of obviousness has been partially addressed by the Supreme Court since this case was decided. But the part that really gets me is that one of the defendants, Docent, tried to get its attorneys fees paid, on the grounds that after IP Innovation saw Docent's code in discovery, it had to know it had no case. But the appeals court said that it wouldn't disturb the lower court's denial, because IP Innovation had at least a plausible theory. And here's the infuriating part:

Moreover, five companies with products similar to the defendant's products took a license to the patented technology, which inferentially supports IP Innovation's argument that it had reasonable grounds upon which to initially bring suit against Docent.

Of course, it's not uncommon for folks to pay off a patent troll rather than spend more money to knock the patent out. For all I know, Red Hat might even do it, if there are no GPL implications. Unfortunately, that impacts on everyone else, while helping in the immediate. So if I were a patent troll, I'd settle for just under what it would take to go to court and lose on summary judgment. And of course they do.

What about if I were a secret friend of a patent troll? Here's what I'd do: I'd have them sue me for the same patent, and I'd pay them a secret amount, sealed of course, which would empower my friend the troll to go after the other defendant, and if we two had a really rich friend in common in on the plot, they'd get sued too, so as to allow a transfer of money to the troll, which would make them better able to go after the defendant of our mutual dreams. Wouldn't that be perfect if you were a low-down conniving you know what, looking for an edge in the marketplace and didn't care about ethics? It would look like we were victims too, but in reality, it'd be an elaborate dance where no one loses but the real target.

Just imagining.

And yes, the only real solution is for software and patents to get a divorce. The current situation is exhibit A as to why. And the more prior art and issues of obviousness we find, the more clear it will be to others who may not understand the tech just why that is so. So, we'll learn patent law stuff, and they can learn that software is usually just incremental steps, building on top of what others did before. It doesn't light up the sky. You ought to have to light up the sky to get a patent, I'd think. And perhaps the greatest help we can provide is to explain to those who are not technically trained or inclined just what is really innovative and what isn't. So in your comments, don't just say, "That's not innovative" or "That's obvious". Explain why, as if to a very interested young relative who knows nothing much about programming. And if you left a superduper prior art comment on the initial article or emailed me with some, feel free to repeat the information here. We had so many comments on that announcement article, you can't access easily any more until Mathfox updates Geeklog. It's a memory issue. In the meantime, if you need to access that article, if you add this to the url:

&mode=threaded

you can at least access. He'll get to the upgrade as soon as he can. I mean by that, if you get a 404, then add the above to the url and you'll get in. It's only certain modes that can't access at the moment. So the entire url would be:

http://www.groklaw.net/ article.php?story=20071011205044141

Update: We've set the memory higher, so that solves the problem short term.

*************************************

NOTE: Pursuant to Fed. Cir. R. 47.6, this disposition is not citable as precedent. It is a public record.

UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT

04-1571, 05-1153

IP INNOVATION, L.L.C.,

Plaintiff-Appellant,

v.

ECOLLEGE.COM,

Defendant/Appellee,

and

DIGITALTHINK, INC.,

Defendant-Appellee,

and

DOCENT, INC.,

Defendant-Cross Appellant.

_______________________

DECIDED: November 29, 2005

____________________

Before NEWMAN, RADER, and DYK, Circuit Judges.

RADER, Circuit Judge.

On summary judgment, the United States District Court for the Southern District of Texas determined that the defendants did not infringe U.S. Patent No. 4,877,404 (the '404 patent). Finding no reversible error, this court affirms the decision of the district court.

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On May 29, 2002, IP Innovation, the owner of the '404 patent, sued WebCT and Thomson Learning for infringement of the '404 patent. IP Innovation later amended its complaint to add six additional defendants. Five of the eight defendants eventually settled. Only eCollege.com, DigitalThink, and Docent (the defendants) continued to litigate the case against them.

Before trial, the district court granted summary judgment of non- infringement to the defendants because the accused products do not satisfy two limitations under the court's claim construction. See IP Innovation, L.L.C. v. WebCT, Inc., Civil Action No. H-02-2031 (S.D. Tex. Jul. 1, 2004) (Summary Judgment Order); IP Innovation, L.L.C. v. WebCT, Inc., Civil Action No. H-02- 2031 (S.D. Tex. Jan. 12, 2004) (First Claim Construction Order); IP Innovation, L.L.C. v. WebCT, Inc., Civil Action No. H-02-2031 (S.D. Tex. Feb. 10, 2004) (Second Claim Construction Order); IP Innovation, L.L.C. v. WebCT, Inc., Civil Action No. H-02-2031 (S.D. Tex. Mar. 5, 2004) (Amended Claim Construction Order). The district court reached its claim construction after a Markman hearing and extensive briefing by the parties, though it provided no explanation in its orders for the meaning attributed to the claims.

After prevailing on summary judgment, the defendants unsuccessfully moved for attorney fees. IP Innovation, L.L.C. v. WebCt, Inc., Civil Action No. H-02-2031 (S.D. Tex. Oct. 4, 2004) (Order Denying Attorney Fees). IP Innovation appeals the grant of summary judgment of non-infringement. Docent cross

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II.

This court reviews a district court's grant or denial of summary judgment under the law of the regional circuit. Chamberlain Group, Inc. v. Skylink Techs., Inc., 381 F.3d 1178, 1191 (Fed. Cir. 2004). Under the law of the United States Court of Appeals for the Fifth Circuit, this court reviews the grant or denial of summary judgment without deference. Condrey v. Suntrust Bank Of Georgia, --- F.3d ---, 2005 WL 2857452, at *4 (5th Cir. 2005) (citation omitted).

In an exceptional case, a court may award attorney fees. See 35 U.S.C. § 285. "Although the determination of whether a case is exceptional is a question of fact reviewed for clear error, this court reviews a district court's decision to award attorney fees in an exceptional case only for abuses of discretion." Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1460 (Fed. Cir. 1998) (en banc).

This court reviews a district court's denial of a motion for sanctions under the law of the regional circuit. See Nystrom v. Trex Co., 2005 WL 2218632 (Fed. Cir. 2005) (citation omitted). The Fifth Circuit reviews the denial of a motion for sanctions for an abuse of discretion. Test Masters Educ. Serv. Inc. v. Singh, --- F.3d ---, 2005 WL 2650945, at *16 (5th Cir. 2005) (citation omitted).

III.

Infringement entails a two-step process: "First, the court determines the scope and meaning of the patent claims asserted . . . [and second,] the properly

3

In Phillips, this court explained: "It is a 'bedrock principle' of patent law that `the claims of a patent define the invention to which the patentee is entitled the right to exclude.'" Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). Thus, this court's analysis begins with a review of the claim terms which "'are generally given their ordinary and customary meaning.'" Id (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). "The inquiry into how a person of ordinary skill in the art understands a claim term provides an objective baseline from which to begin claim interpretation." Id "Importantly, the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification." Id

In the '404 patent, the parties dispute the district court's interpretation of two limitations: (1) embedded in a series of interrelated screens (the embedded limitation); and (2) operatively connected (the operatively connected limitation).

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1. An interactive computer software system permitting a user to take a pre-selected computer course or access a pictorial data base, comprising:

....
(c) a graphics computer sub-system operatively connected to said host computer sub-system, said graphics computer sub-system executing said course upon interrogation by said host computer sub-system wherein said course includes a series of interrelated pictures displayed by said graphics computer sub-system, said series of pictures defining a course responsive to input data from the user and interactively dialoguing with the user as the user progresses through said pre-selected course or data base; and

(d) wherein said pre-selected computer course comprises a distributed program embedded in said series of interrelated pictures.

'404 patent, col. 8, l. 49-col. 9, l. 3 (emphasis added). The district concluded:

In claims 1, 11, and 14 of the '404 Patent, "embedded in a series of interrelated screens" means:

The patent covers a program whose graphic elements include their instructions in a single file for each screen with all of the control codes being directly accessible on the consumer screen.

Amended Claim Construction Order, slip op. at 1 (emphasis added).

The specification supports the district court's interpretation. Turning first to the background section, prior art systems suffered from a saving format that was unalterable during the use of the program. '404 patent, col. 1, ll. 11-15. Specifically, "[r]eferences to pictures [in prior art systems] are embedded in the control program along with all the other programming codes necessary to create a functional course." Id, col. 1, ll. 40-43 (emphasis added). In contrast:

The present invention inverts the normal construction of a course. Where prior art systems embed picture references into a control program, thus, producing a large executable file containing thousands of programming language command lines, the present

5

invention embeds the control commands necessary to run the course into the graphic pictures the author and operator see. These control commands are called microscripts, and may be visible or invisible graphical elements of the complete picture presented to the human operator.

Id, col. 1, ll. 51-60 (emphasis added). Thus, "the invention . . . execut[es] the distributed 'program' that is embedded into the numerous pictures or screens, as opposed to the more universal 'compiled' program [of prior art systems]." Id, col. 5, ll. 45-50 (emphasis added). These pictures or screens may, in turn, be stored on a disk as individual ASCII coded files, though each picture file is to be totally self-contained such that modification of one does not affect the others. Id, col. 1, l. 68-col. 2, l. 3; col. 2, ll. 28-29.

Thus, the inventor specified that "the invention" requires an association of command codes with individual pictures or screens. Moreover the invention permits alteration of each picture or screen (e.g., by changing the associated command codes) without affecting the other pictures or screens. The district court properly articulated that the invention's graphic elements (i.e., pictures and screens) must include their own instructions, which allows independent modification of each graphic element.

In addition, the district court also properly determined that the instructions (i.e., command codes) for a given picture or screen must be stored in a single file. IP Innovation concedes that the specification only discloses a "single file" embodiment, see id., col. 1, l. 68-col. 2, l. 3, but argues against importing this limitation into the language of the claims. The '404 patent, however, repeatedly uses the phrase "the present invention" or "the invention of the present disclosure" in describing its inventive features (including the embedded

6

Thus, the '404 patent does not disclose multiple embodiments having different implementations of the embedded limitation as suggested by IP Innovation. Rather, the 404 patent's narrow characterization of what "the invention" covers in reference to the embedded limitation supports a construction requiring location of all of the command codes for a given picture or screen within a single file.

Finally, the district court also properly determined that the command codes for a given picture or screen must be directly accessible from the computer screen. IP Innovation contends that this feature has absolutely no relation to the term "embedded." To the contrary, the '404 patent states: "[t]he microscript may be embedded anywhere in the pixel pattern of the screen." Id, col. 2, ll. 30-31 (emphasis added). Embedding the microscript in the pixel pattern of the screen means that it must be directly accessible without reference to another file. In other words, a user need not access another file to obtain the command code when it is already present in the pixel pattern of the screen. This discussion in

7

The prosecution history confirms the district court's interpretation. During prosecution, the '404 patent applicant amended the claims to incorporate the "embedded" limitation to traverse a prior art rejection. The applicant also included remarks that distinguished the claimed invention over prior art touch screen displays, which allegedly did not disclose the "MicroScript principle as disclosed and claimed by the Applicant[.]" Contrasting the claimed invention from these prior art displays, the '404 patent applicant explained: "[t]his invention visibly, physically, and electronically connects the button to its command, embodied as a MicroScript" by embedding the MicroScript code in each picture or screen. This explanation reaffirms the district court's construction requiring direct accessibility of the command code.

In brief, the district court properly construed the embedded limitation to mean providing graphical elements (i.e., individual pictures or screens) with corresponding instructions (i.e., command code) in a single file for each graphical element, such that all of the control codes for a given graphical element are directly accessible on the consumer screen. The narrow characterization of the invention in the specification and file wrapper do not permit IP Innovation's broader interpretation.

As to the operatively connected limitation, this limitation appears in two of the '404 patent's three independent claims. Claim 1 is representative:

8

1. An interactive computer software system permitting a user to take a pre-selected computer course or access a pictorial data base, comprising:

....
(c) a graphics computer sub-system operatively connected to said host computer sub-system, said graphics computer sub-system executing said course upon interrogation by said host computer sub-system wherein said course includes a series of interrelated pictures displayed by said graphics computer sub-system, said series of pictures defining a course responsive to input data from the user and interactively dialoguing with the user as the user progresses through said pre-selected course or data base; ....

'404 patent, col. 8, l. 49-col. 9, l. 3 (emphasis added). The district court construed the operatively connected limitation to mean "the graphics computer subsystem communicates with the host computer subsystem through an unmediated mechanism." Amended Claim Construction Order, slip op. at 1. To the contrary, the broad language "operatively connected" does not require communication through an unmediated mechanism.

Claims 1 and 11 use the phrase "operatively connected" to describe the communications that take place between a graphics computer sub-system and a host computer sub-system during operation. The claim language does not state or suggest, however, that these communications must be done on a non- mediated communication mechanism. While the specification does contemplate a non-mediated communication mechanism, see '404 patent, col. 4, ll. 58-59, the particular communication mechanism in any given system has nothing to do with the '404 patent's improvement over the prior art. In other words, the manner in which the host system and the graphics system communicate has no bearing on the modification of one picture or screen without affecting the other screens.

9

Having determined the proper interpretation of the disputed claim limitations, the analysis shifts to an examination of the accused products. In all of the accused products, an HTML file for the first screen is downloaded and displayed when a user initiates the program. Once the first screen has been displayed, a user then selects a hyperlink to navigate to the next screen, which causes the browser to download an HTML file for the next screen and display that next screen for the user. These screens may be edited independently, without affecting the other screens. Accordingly, IP Innovation contends that these screens satisfy the embedded limitation as claimed. IP Innovation acknowledges, however, that a hyperlink itself is not the actual command code located in the HTML file, but submits a hyperlink is a graphical representation of the command code which can be made visible using a "right click" function that is analogous to the transcriber function disclosed in the '404 patent. See '404 patent, col. 7, l. 62-col. 8, l. 6.

Contrary to IP Innovation's contention, the transcriber function disclosed in the '404 patent has nothing in common with the right click function in the accused products. Rather, the disclosed transcriber function converts unreadable command code to a human readable font. Notably, the command code in the '404 patent is still "embedded" in the pixel format of the screen prior to

10

By way of analogy, a building does not contain its architectural blueprints "embedded" thereon. Rather, blueprints determine the location of various pieces to assemble the building, similar to the manner in which an HTML file is used to create a picture in the accused products. In contrast, IP Innovation's disclosed transcriber is analogous to a magnifying glass used to read the fine print at the bottom of a form contract -- the text is physically "embedded" thereon, but is simply so small that it is invisible to the naked eye until "converted" or "transcribed" to a larger size. For at least this reason, the district court properly concluded that the accused products do not satisfy the embedded limitation, and thus properly granted summary judgment of no literal infringement.

In addition, the accused products do not satisfy the embedded limitation under the Doctrine of Equivalents (DOE). Rather, because the '404 patent applicant added the embedded limitation and argued this distinction in traversing the noted prior art rejection during prosecution, DOE coverage is unavailable.

11

Finally, because this court concludes the accused products do not satisfy the embedded limitation literally or under the DOE, this court need not address whether or not the accused products satisfy the operatively connected limitation. Therefore this court affirms the grant of summary judgment of non-infringement.

IV.

In Docent's cross appeal, Docent alleges the district court abused its discretion in denying its motion for attorney fees. Specifically, Docent argues that it presented the district court with substantial evidence demonstrating the baseless nature of IP Innovation's suit. Docent faults IP Innovation for not explaining the nature of its case or its infringement position after receiving Docent's source code. Essentially, Docent argues that IP Innovation should have stipulated to non-infringement rather than forcing the defendants to brief the

12

Contrary to Docent's position, IP Innovation provided both the trial court and this court with a plausible infringement theory under the claim construction adopted by the district court and also under IP Innovation's proposed claim construction. While both courts rejected IP Innovation's theories, they were not so implausible as to suggest the district court abused its discretion in denying the attorney fee award. Moreover, five companies with products similar to the defendant's products took a license to the patented technology, which inferentially supports IP Innovation's argument that it had reasonable grounds upon which to initially bring suit against Docent. Thus, this record does not suggest that the district court abused its discretion in denying Docent's motion for attorney fees.

V.

In conclusion, because the district court properly determined that the accused products do not satisfy the embedded limitation, this court affirms the grant of summary judgment of non-infringement to the defendants. Additionally, because the district court did not abuse its discretion in denying Docent's motion for attorney fees, this court also affirms the denial of the fee award requested by Docent.

13