Art+com Innovationpool Gmbh v. Google LLC
712 F. App'x 976
Fed. Cir.2017Background
- Art+Com sued Google alleging Google Earth infringed asserted claims (1, 3, 14, 28) of U.S. Patent No. RE44,550, which claims a "coarse-to-fine" method of requesting, storing, and displaying multi-resolution geographic image data.
- The critical date for anticipation under pre-AIA § 102(b) was December 17, 1995.
- Google defended on invalidity grounds, presenting evidence that SRI’s TerraVision (demonstrated publicly in 1994 and 1995, with source code and papers circulated) anticipated the asserted claims.
- Key evidence: a 1994 VHS demo of TerraVision, draft technical papers, testimony of SRI developer Stephen Lau (who demonstrated TerraVision at conferences and provided source code to attendees), and expert testimony (Dr. Goodchild) mapping TerraVision to claim elements.
- The jury found by clear and convincing evidence that TerraVision placed the invention in public use before the critical date and anticipated the asserted claims; the district court denied Art+Com’s JMOL and entered judgment for Google.
- The Federal Circuit reviewed denial of JMOL for substantial-evidence support of the jury’s anticipation finding and affirmed, focusing on anticipation and public-use/readiness issues and not reaching infringement.
Issues
| Issue | Plaintiff's Argument (Art+Com) | Defendant's Argument (Google) | Held |
|---|---|---|---|
| Whether SRI TerraVision placed the claimed invention in public use before the critical date (anticipation under §102(b)) | TerraVision evidence was vague, uncorroborated, and did not show every claim element | TerraVision was publicly demonstrated, documented, and its source code/papers disclose the claimed "coarse-to-fine" retrieval and field-of-view behaviors | Held: Jury had substantial evidence to find TerraVision publicly used and anticipating the asserted claims; verdict affirmed |
| Adequacy of corroboration for Lau’s testimony and for the expert’s reliance on it | Lau’s testimony needed more corroboration; expert improperly "cherry-picked" | VHS demo and contemporaneous papers (and source code) sufficiently corroborated Lau and supported the expert’s mapping to claims | Held: Documentary and video evidence sufficiently corroborated Lau; expert reliance was permissible |
| Whether TerraVision disclosed specific claim limitations (e.g., determining field of view; iterative "divide" into child nodes; coordinate transformations) | TerraVision did not perform the precise steps recited (steps (b), (c), (f), (g), and claim-3 transformations) | Papers, tape, and Lau’s testimony show selectable viewpoints/field-of-view retrieval, quadtree/resolution-pyramid recursive subdivision (coarse-to-fine), and coordinate normalization | Held: Substantial evidence supported that TerraVision disclosed each disputed limitation; jury could credit expert and Lau |
| Whether TerraVision was "ready for patenting" and the invention was discernable to the public | TerraVision lacked proof of reduction to practice; research issues remained; public could not discern the invention from isolated excerpts | TerraVision was demonstrated publicly (live demos, VHS), source code and papers were shared publicly, and prototypes/demos showed workability—so it was ready and discernable | Held: Jury reasonably found TerraVision ready for patenting and the invention discernable; substantial evidence supports public-use/readiness finding |
Key Cases Cited
- Pfaff v. Wells Elecs., 525 U.S. 55 (ready-for-patenting test for on-sale/public-use bars)
- Acromed Corp. v. Sofamor Danek Grp., Inc., 253 F.3d 1371 (anticipation is factual question reviewed for substantial evidence)
- Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358 (anticipation requires that one skilled in the art reasonably understand all claim elements are disclosed)
- Finnigan Corp. v. Int’l Trade Comm’n, 180 F.3d 1354 (importance of corroboration in §102(b) contexts)
- Atlanta Attachment Co. v. Leggett & Platt, Inc., 516 F.3d 1361 (reduction to practice/readiness shown by working demonstration/prototype)
- Invitrogen Corp. v. Biocrest Mfg., L.P., 424 F.3d 1374 (Pfaff ready-for-patenting test applies to public-use bar)
- Dey, L.P. v. Sunovion Pharm., 715 F.3d 1351 (discernability requirement where expectation of secrecy exists)
- Delano Farms Co. v. Cal. Table Grape Comm’n, 778 F.3d 1243 (similar to Dey on secrecy/expectation of confidentiality)