Found exclusively on the SMU STLR web site, the E.D. Texas Update is a continuously updated blog of recent IP cases decided in the U.S. District Court for the Eastern District of Texas. We encourage you to check back regularly.

MHL TEK, LLC v. Nissan Motor Co., (2009 WL 2824731)
Decided: Aug 28, 2009

Plaintiff MHL TEK LLC (“MHL”) filed a claim against several defendants, including Nissan Motor Co. and several other car manufacturers. MHL asserts patent infringement of three different patents: the “516,” the “496,” and the “966.” The ‘516’ patent deals with a tire pressure monitoring system that is designed to improve safety and performance of the car tires. While MHL claims that they invented this “breakthrough” in the field of art, Defendants contend this was a mature field of art as early as 1994. The question at hand is how courts should approach claim construction.

While determining whether MHL asserted a valid infringement claim, the court stated that three primary sources must be examined: “the claims, the specification, and the prosecution history.” The court further states that patent law requires the specification to “contain a written description of the invention that enables one of ordinary skill in the art to make and use the invention.” However, it is the function of the claims, not the specification to define the limitations of the patentees’ claims. “The ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., [. . .] the effective filing date of the patent application.” After weighing the arguments, the court resolved the definition of certain terms within the claim to ultimately determine the scope of the claim. The Court defined “contact” as “touching either directly, or through a conductive seal.” The Court defined the term “conductive” as “capable of allowing a direct current or an alternating current of electricity to pass through it.” The Court defined “conductive elastomer” as “a seal consisting of a rubberlike silicone (or plastic) material which is conductive.” The Court defined the terms “transmission of the signal using a conductive wheel [as an antenna]” as “the wheel rim to act as an antenna by transmitting, as an electromagnetic wave, a signal containing data representative of a value of inflation pressure.”

The Court adopted the construction set forth in their opinion for the disputed patent terms, and the parties were ordered not to refer, “directly or indirectly, to each other's claim construction positions in the presence of the jury” at the trial.

Summary by Aida Wondwesson, Casenote & Comment Editor

i4i, L.P. v. Microsoft Corp., (2009 WL 2449024)
Decided: Aug 11, 2009

i4i, L.P., and Infrastructures for Information, Inc. (collectively “i4i”) brought a patent infringement claim against Microsoft Corporation alleging infringement of i4i’s U.S. Patent No. 5,787,449 entitled “Method and System for Manipulating the Architecture and the Content of a Document Separately from Each Other.” The patent covers software that controls document architecture and content, a “metacode map,” that allows a computer to manipulate the structure of documents without using manually embedded command codes. Microsoft Word 2003 and 2007 contain this type of Extensible Markup Language (“XML”) functionality.

A jury found i4i’s ‘449 patent valid and infringed and awarded i4i $200,000,000 in damages. The Court awarded i4i an addition $40,000,000 in enhanced damages after the jury found the infringement to be willful. The Court also granted i4i’s motion for permanent injunction, prohibiting Microsoft from selling Microsoft Word 2003 and 2007 with the infringing XML functionality.

Granting i4i’s motion for enhanced damages, the Court applied the factors from Read Corp. v. Portec, Inc., 970 F.2d 816, 826 (Fed. Cir. 1992): (1) whether the infringement was deliberate; (2) whether the infringer knew of the patent, investigated the scope of the patent and had a good-faith belief that it was invalid or not infringed; (3) the infringer’s behavior during litigation; (4) the infringer’s size and financial condition; (5) closeness of the case; (6) duration of infringement; (7) remedial action taken; (8) motivation for harm; and (9) whether the infringer tried to conceal its conduct.

The Court held that the evidence at trial established Microsoft’s knowledge of i4i’s patent, that Microsoft never presented any evidence that it conducted any investigation into a patent, and never had a good-faith belief of non-infringement. Also supporting the enhanced damages was a lack of remedial action after learning of i4i’s patent, Microsoft’s great financial wealth and command of the market, and legally improper arguments—violating the Court’s instructions—made by Microsoft’s counsel during trial.

Granting i4i’s motion for a permanent injunction, the Court applied the four factor test from eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006): (1) whether the party suffered an irreparable injury; (2) whether other available remedies are inadequate to compensate that injury; (3) whether an equitable remedy is warranted when balancing the parties’ hardships; and (4) whether the public interest would not be disserved by a permanent injunction.

The Court found that i4i “overwhelmingly” showed irreparable injury by Microsoft’s infringement that could not simply be compensated with monetary damages because the companies are in direct competition with each other—Microsoft caused i4i to lose its market share and the opportunity brand recognition. The Court again looked at the size and economic wealth of Microsoft and found that the hardship weighed much more heavily on i4i—custom XML is a small part of Microsoft, but it is central to i4i. Since Microsoft Word does not relate to a compelling public interest, health, or safety, the fourth factor weighs in support of an injunction. The Court also found that the public interest would not be disserved because Microsoft is not required to disable the Word products already sold and is still allowed to provide support for them.

The U.S. Court of Appeals for the Federal Circuit granted Microsoft’s motion for a stay, pending appeal, of the district court’s injunction on September 3, 2009. The Court of Appeals heard oral arguments on September 23, 2009.

Summary by Shayla Edwards, Casenote & Comment Editor

Doe v. Myspace (629 F.Supp.2d 663)
Decided: May 22, 2009

The mother of a 15-year-old girl brought a negligence, gross negligence, and strict product liability claim against the popular social website, MySpace. Plaintiff alleged that her daughter “was lured from her home and sexually assaulted by a sexual predator, who communicated with [. . .] and ultimately orchestrated his sexual assault of [her daughter] through the MySpace.com website.” Defendant responded to the complaint by claiming immunity under the Communications Decency Act (CDA), 47 U.S.C. § 230. The CDA provides that “no provider or user of an interactive computer service shall be treated as the publisher or speaker of any information provided by another information content provider.” “Interactive computer service” is defined by the Act as “any information service, system, or access software provider that provides or enables computer access by multiple users to a computer server, including specifically a service or system that provides access to the Internet and such systems operated or services offered by libraries or educational institutions.” The term “information content provider” is defined by the Act as “any person or entity that is responsible, in whole or in part, for the creation or development of information provided through the Internet or any other interactive computer service.” Plaintiff claims that Defendant is not entitled to immunity under the CDA because it “refused to employ reasonable safety measure” on the website and that Defendant was not acting as an information content provider by creating and developing information that led to the sexual assault of Plaintiff’s daughter.

The district court quickly dismissed Plaintiff’s first argument, citing a Fifth Circuit decision holding MySpace not liable for serving as a publisher of ”online third-party-generated content.” The district court considered Plaintiff’s second argument that the Defendant cannot claim immunity under the CDA because it acted as an information content provider, rather than just as a publisher of the content. MySpace prompts users to supply additional personal information, such as “Interests & Personality”, and Plaintiff suggested that this plays a part as an information content provider. While the district court briefly entertained the argument, it ultimately held that prompting users to supply optional additional information is conduct insufficient to hold MySpace as an information content provider. Accordingly, the court granted Defendant’s motion to dismiss.

Summary by Aida Wondwesson, Casenote & Comment Editor