Appeals Court Partially Reverses eBay Patent Case: Setting the Stage for a Permanent Injunction

Patent, Patent Cases 2005,

Patentlyo058

MercExchange v. eBay (Fed. Cir. 2005)

by Dennis Crouch

At the district court level, Thomas Woolston, creator of the MercExchange and Patently-O Reader, won a $35 million patent infringement suit against eBay for infringement of his patents covering live internet auctions.  On March 16, 2005, the Federal Circuit released its decision on appeal, reversing the decision in-part, but setting the stage for a permanent injunction against eBay.

On appeal, the Federal Circuit partially overturned the district court’s decision, finding that at least one of the MercExchange patents invalid but vacating the lower court’s ruling that another patent was invalid.

Perhaps most importantly, MercExchange challenged the district court’s refusal to issue a permanent injunction against eBay’s use of the invention.  The CAFC agreed with MercExchange, that the district court “did not provide any persuasive reason that this case is sufficiently exceptional to justify the denial of a permanent injunction.”  Specifically, the CAFC found that the fact that MercExchange expressed a willingness to license was not a valid reason for depriving it of the right to an injunction to which it would otherwise be entitled.

If the injunction gives the patentee additional leverage in licensing, that is a natural consequence of the right to exclude and not an inappropriate reward to a party that does not intend to compete in the marketplace with potential infringers. . . . We therefore see no reason to depart from the general rule that courts will issue permanent injunctions against patent infringement absent exceptional circumstances.

Of course, there is only a very small likelihood that eBay would allow its servers to be shut-down rather than settle the case.  In addition, it is unclear how an injunction would operate in this case, although it would most likely only alter e-bay’s ‘buy it now’ feature.

Finally, the appellate panel affirmed the portion of the judgment denying an award of enhanced damages or attorney fees for MercExchange.

AFFIRMED IN PART, REVERSED IN PART, VACATED IN PART, and REMANDED.

The MercExchange patents are also under reexamination at the Patent Office.  However, if the litigation concludes before the reexam is complete, there is some question as to whether the reexam can be used by eBay to re-open the case.  One issue stems from the 1803 case of Marbury v. Madison where the Supreme Court held that the Judiciary, not the Executive Branch that determined the law.  In this case, the PTO (Executive Branch) would be telling the Judiciary to change its mind.

Links:

March 16, 2005 04:02 PM US Eastern Timezone

eBay Statement on U.S. Court of Appeals Ruling in MercExchange Case

SAN JOSE, Calif.–(BUSINESS WIRE)–March 16, 2005–eBay (Nasdaq:EBAY) is pleased with today’s decision by the U.S. Court of Appeals that invalidates one of MercExchange’s patents, and as a result, throws out all the related damages. Looking forward, we believe that any injunction that might be issued by the District Court with respect to the other patent will not have an impact on our business because of changes we have made following the District Court’s original verdict. The U.S. Patent and Trademark Office is actively reexamining all of MercExchange’s patents, having found that substantial questions exist regarding the validity of MercExchange’s claims. The Patent and Trademark office has already initially rejected all of the claims of one of MercExchange’s patents. We are confident in our position against MercExchange and do not believe that these matters will have any impact on our business.

BlackBerry lawsuit settles for $450M US: Patent Law Questions Remain

Patent, Patent Cases 2005

The legal saga involving NTP’s patents covering Research-In-Motion’s BlackBerry (R) technology appears to be over. According to news reports, RIM has settled the BlackBerry Lawsuit for $450M (US). 

The lawsuit did produce what appears to be an expansion of U.S. patent laws to cover infringing activity that partially occurs on foreign soil.  However, the settlement leaves a number of open questions regarding application of the newly expanded theory of liability. 

Links:

NOTE: The drawing above was used in RIM’s brief at the U.S. Federal Circuit Court of Appeals to graphically show how a substantial portion of the ‘infringing’ activity occurred on foreign soil.  The Court rejected RIM’s argument that activity across the border could not create liability under the U.S. patent laws.

CAFC: References on Face of Patent are Intrinsic Evidence for Claim Construction

Patent, Patent Cases 2005

Inline_skate

V-Formation v. Benetton Group & Rollerblade, Inc. (Fed. Cir. 2005).

By Marcus Thymian

In its March 15 decision, the Federal Circuit affirmed a district court’s grant of summary judgment of non-infringement of the claims of three patents relating to in-line skate technology.  The patents were directed to a particular frame design for attaching the wheels to the boot.  To provide flexibility in frame and wheel adjustment of a skate, the frame included two sidewalls “releasably attached” by a plurality of fasteners to toe and heel plates of the skate.   (For example, see U.S. Patent No. 5,873,584).

The dispute centered on whether rivets could serve as fasteners that “releasably attach.”  The embodiments set forth in the patents-in-suit utilized screws as the releasably attaching fasteners.  The district court had construed the term “releasably attaching” to mean that the fasteners “must permit the sidewalls to be easily removed and replaced” and determined that one skilled in the art would not consider rivets to fall under that definition.  In reaching that conclusion, the district court looked to the specification of the patents-in-suit, as well as the specification of a patent (the “Meibock patent”) cited on the face of one of the patents-in-suit.  Finally, the district court supported its construction by referring to an uncontrolling decision of the Federal Circuit that interestingly addressed the unremovable nature of rivets in in-line skates:  “Screws, unlike rivets and laminates, are meant to be unscrewed, that is, to be removed.  A rivet or a laminate, to the contrary, is meant to remain permanent, unremovable unless one is bent on breaking the permanent structure apart.”

The Federal Circuit first agreed that the intrinsic evidence called for “releasably attaching” to be construed per the district court’s definition.  It agreed that the intrinsic evidence included not only the patent specification, but also the cited Meibock patent:

    The district court properly considered other intrinsic evidence to aid its construction.  For instance, the district court considered [the Meibock patent].  The Meibock patent is prior art that was listed as a reference on the face of the ‘466 patent and in an Information Disclosure Statement.  This prior art reference to Meibock is not extrinsic evidence.  This court has established that “prior art cited in a patent or cited in the prosecution history of the patent constitutes intrinsic evidence. …  The Meibock patent explains that the toe and heel plates are “permanently attached … through the use of rivets or releasably attached through the use of fasteners such as screws or bolts.” …  Thus, the district court correctly concluded:  “[The] Meibock patent provides evidence that rivets are considered by persons of ordinary skill to be permanent fasteners.”

Finally, the Federal Circuit approved of the district court’s reference to its earlier uncontrolling decision addressing the removability of rivets, since the district court had merely used it to supports its independent conclusion in this case.

Marcus Thymian is a partner at McDonnell Boehnen Hulbert & Berghoff LLP in Chicago. Mr. Thymian is experienced in planning, creating, enforcing, and defending against patent portfolios, and has logged many miles on in-line skates over the past 20 years. [link to bio]

Links:

Appeals Court Orders New Trial in $500 Million Microsoft-Eolas Web Browser Case

Patent, , , ,

Eolas v. Microsoft

Eolas v. Microsoft (Fed. Cir. March 2, 2005).

Eolas and the University of California sued Microsoft for infringement of its patent that involves a method of using a web browser to open third-party applications using plug-ins.  The District Court for the Northern District of Illinois granted final judgment to Eolas after a jury found that Microsoft infringed the patent and actively induced United States users of Internet Explorer to infringe. The district court also invoked 35 U.S.C. § 271(f) to include foreign sales of Internet Explorer in the royalty awarded to Eolas.  The jury awarded Eolas a royalty of $1.47 per unit of infringing product, which amounted to a total award of $520,562,280.

On appeal, the Court of Appeals for the Federal Circuit (CAFC) found that district court improperly granted judgment as a matter of law (JMOL) in Eolas’ favor on Microsoft’s anticipation and obviousness defenses and improperly rejected Microsoft’s inequitable conduct defense -- and thus vacated the district court’s decision and remanded for a new trial on these issues. The CAFC also affirmed the district court's claim construction and related jury instruction. 

Finally, the biggest news from a patent law perspective is that the Court affirmed the district court’s holding that "components," according to section 271(f)(1), include software code on golden master disks.

To continue reading, become a Patently-O member. Already a member? Simply log in to access the full post.