271 F. Supp. 3d 667
D. Del.2017Background
- IBM sued Priceline, Kayak, OpenTable and related entities alleging infringement of four patents (’346, ’601, ’967, ’849) concerning single sign‑on, state preservation via continuations, and caching/presentation of applications/ads.
- Parties filed numerous summary judgment and Daubert motions; briefing concluded and the Court heard argument in April 2017.
- Disputed factual issues included prior‑art availability (a student thesis “Salomon”), whether Apple HyperCard was in public use/configured as asserted, and technical characterizations of continuations, templates, JSON outputs, caching, and who performs/stores content.
- Claim construction: Court previously construed “application(s)” and “continuation(s)” (e.g., continuation = a new request a client may send, such as a hyperlink), and applied those constructions to validity/infringement analyses.
- The Court resolved many summary judgment and evidentiary motions: denied IBM’s motion on Salomon; denied indefiniteness challenge to “application(s)”; granted IBM judgment that HyperCard did not anticipate; granted noninfringement of the ’849 patent (no direction/control of storing step); denied several motions re: the ’601 and ’967 patents and various expert exclusion motions; granted IBM partial relief on marking and §288 issues; allowed inequitable conduct counterclaims to proceed in part.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Salomon thesis is §102 prior art to ’849 | Salomon was not "printed publication"/publicly accessible; therefore cannot anticipate | Thesis was cataloged, shelved, cited and supported by IBM grant — could be publicly accessible and hence prior art | Denied IBM MSJ; fact dispute — a reasonable factfinder could find Salomon publicly accessible under §102(a)/(b) |
| Whether term “application(s)” is indefinite (’967, ’849) | Term is sufficiently defined by specification, prosecution history, and experts — not indefinite | Term lacks objective boundary in web context; expert admitted subjectivity | Denied defendants’ indefiniteness MSJ — genuine factual dispute; Court finds claim language + prosecution history allow reasonable certainty |
| Whether HyperCard anticipates ’967 | HyperCard was known/used/configured on network before filing to anticipate claims | Defendants rely on Goodman handbook and expert reconstruction showing networked HyperCard | Granted IBM MSJ; insufficient evidence HyperCard was actually configured/used in enabling networked manner before filing; mere possibility/description not enough for anticipation |
| Whether Defendants infringe Filepp patents (’967, ’849) given third‑party actions and caching | IBM: claim language characterizes screen display; even if browser/storage occurs on user device, Defendants dictate performance or their templates produce required outputs | Defendants: key steps (retrieving/storing) are performed by user agent, not Defendants; caching passive and can be disabled; do not direct/control storing step | Mixed: denied noninfringement re: ’967 (disputed fact whether Defendants dictate display behavior); granted summary judgment of noninfringement for ’849 because storing is a claimed method step and Defendants do not direct/control it |
Key Cases Cited
- Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574 (legal standard for summary judgment)
- Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (summary judgment: genuine issue if reasonable jury could find for nonmovant)
- Celotex Corp. v. Catrett, 477 U.S. 317 (allocation of burdens on summary judgment)
- Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579 (trial judge gatekeeping for expert testimony)
- Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (definiteness requires reasonable certainty)
- In re Hall, 781 F.2d 897 (Fed. Cir.) (printed publication/public accessibility analysis)
- In re Cronyn, 890 F.2d 1158 (Fed. Cir.) (thesis accessibility may not be prior art where not meaningfully cataloged)
- SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186 (Fed. Cir.) (public accessibility test for printed publications)
- Summit 6, LLC v. Samsung Elecs. Co., 802 F.3d 1283 (Fed. Cir.) (distinguishing claim language that characterizes a step from separate method steps)
- SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319 (Fed. Cir.) (attribution of steps and divided infringement analysis)