ART+COM Innovationpool GmbH v. Google LLC
1:14-cv-00217
| D. Del. | Sep 9, 2016Background
- ACI sued Google alleging infringement of U.S. Reissue Patent No. RE44,550 (claims 1, 3, 14, 28) by various Google Earth products; case tried to a jury in May 2016.
- Jury verdict: Google did not infringe; jury found claims invalid by anticipation (SRI TerraVision and alternatively TVision paper) and found claim 3 obvious over TVision plus the '319 Global Mapping patent. Final judgment entered; ACI moved under Rule 50(b) (JMOL) and Rule 59 (new trial).
- Disputed claim elements centered on claim 1 steps (f) and (g): whether the accused products (Google Earth) ‘‘divide each section, request higher-resolution data for each smaller section, centrally store and represent them, and repeat’’ (i.e., no node-skipping).
- Google’s defense relied on testimony and source-code analysis that Google Earth prioritizes and fetches high-resolution tiles first and may skip intermediate nodes, so it does not perform step (f) and thus not step (g); experts and corporate witness supported node-skipping testimony.
- Validity evidence: Google presented contemporaneous demonstrations, papers, video, and testimony showing SRI TerraVision was publicly demonstrated and embodied the claimed features (coarse-to-fine quad-tree retrieval, distributed servers, coordinate transforms); jury found clear-and-convincing anticipation and obviousness as described above.
- The court denied ACI’s post-trial JMOL and new-trial motions, finding substantial evidence supported the jury’s noninfringement and invalidity findings and rejecting ACI’s challenges to witness credibility and short deliberations.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Infringement of claims 1, 3, 14, 28 (steps (f) & (g)) | Google Earth performs coarse-to-fine zooming and thus practices steps (f) and (g); testimony and source code support infringement | Google Earth prioritizes and requests high-resolution tiles first, skipping intermediate nodes; therefore it does not request/represent each smaller section and does not repeat step (f) as required | Denied JMOL; substantial evidence (Google witnesses and expert) supported jury finding of noninfringement |
| Anticipation by SRI TerraVision (claims 1, 3, 14, 28) | Public demos and materials did not disclose all claim limitations, were not sufficiently ascertainable, and TerraVision was not "ready for patenting" | Contemporaneous demos, papers, video, source code, and witness testimony showed TerraVision publicly demonstrated and embodied each claim element | Denied JMOL; substantial corroborated evidence supported jury finding of anticipation |
| Anticipation by T_Vision paper (claims 1, 14, 28) | T_Vision was not shown to have been published/distributed before priority date and did not disclose steps (b), (f), (g) | T_Vision was included on SIGGRAPH '95 CD-ROM and its disclosure (continuous zoom, quad-tree, view/frustum calculation) teaches steps (b), (f), (g) | Denied JMOL; jury reasonably found T_Vision was a prior printed publication and anticipated those claims |
| Obviousness of claim 3 (T_Vision + Global Mapping patent) | No motivation to combine; claim 3 solved a precision/coordinate problem not suggested by combination | Global Mapping patent discloses coordinate transformations; combination with T_Vision’s navigation/zoom teachings would be a predictable, obvious improvement | Denied JMOL; substantial evidence supported jury finding of obviousness for claim 3 |
Key Cases Cited
- Marra v. Philadelphia Housing Authority, 497 F.3d 286 (3d Cir.) (JMOL standard — view evidence in light most favorable to nonmovant)
- Pannu v. Jolab Corp., 155 F.3d 1344 (Fed. Cir.) (post-trial JMOL standard—applicable legal conclusions vs. jury findings)
- Medtronic, Inc. v. Mirowski Family Ventures, LLC, 134 S. Ct. 843 (U.S.) (burden of proof for infringement rests on patent owner)
- Broadcom Corp. v. Emulex Corp., 732 F.3d 1325 (Fed. Cir.) (accused device that sometimes practices a claim may nonetheless infringe; analysis depends on claim language)
- Pfaff v. Wells Electronics, Inc., 525 U.S. 55 (U.S.) ("ready for patenting" test relevant to public-use/on-sale bars)
- KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (U.S.) (obviousness—predictable variation and motivation to combine prior art)
- Egbert v. Lippmann, 104 U.S. 333 (U.S.) (public use may exist even where invention's workings were not apparent to observers)