Massachusetts Patent Litigation Wrap Up — March 2019

This post is a part of a monthly series summarizing notable activity in patent litigation in the District of Massachusetts, including short summaries of substantive orders.

Realtime Data LLC d/b/a IXO v. Acronis, Inc., 17-cv-11279 (D. Mass. Mar. 12, 2019) (Talwani, J.)

Realtime sued Acronis for infringement of U.S. Patent Nos. 9,054,728, 7,415,530, 9,116,908, and 8,717,204, which generally relate to systems and methods for digital data compression. On March 12, 2018, Acronis moved for a stay pending decisions on inter partes review (IPR) petitions filed by Acronis and third parties against the asserted patents. At the time, there were fourteen pending IPR petitions on the asserted patents, and of those fourteen, the Patent Trial and Appeal Board (PTAB) had instituted IPR petitions for three of the four asserted patents.

In view of the PTAB's institution of two IPR proceedings on the '204 patent, and after considering the stage of the litigation, whether a stay will simplify the issues in questions, and whether a stay will unduly prejudice or present a clear tactical advantage to Realtime, the Court granted Acronis's motion as to the '204 patent, but denied the motion as to the other patents-in-suit.

Enovate Med., LLC v. Definitive Tech. Grp., LLC, 18-cv-10296 (D. Mass. Mar. 28, 2019) (Stearns, J.)

Enovate filed a complaint against Definitive in February 2018, alleging that Definitive's manufacture and sale of certain workstation and battery products infringed claims 1, 2, 12, 13, and 14 of U.S. Patent No. 7,782,607. A year later, Definitive filed a request for ex parte reexamination of the '607 Patent with the U.S. Patent and Trademark Office, and on March 20, 2019, the PTO ordered reexamination of each of the asserted claims.

In its motion, Definitive asserted that the litigation was still in its early stages, as fact discovery was not yet completed, and the parties had not yet provided amended contentions, taken party depositions, exchanged expert reports, or filed dispositive motions. Further, Definitive contended that a stay would simplify the issues in dispute by enabling the parties and the Court to take advantage of the PTO's expertise in patent validity and applying prior art. Definitive also argued that the requested stay would not prejudice either party, as a stay would allow the parties and the Court to conserve resources relating to litigating the asserted claims that could be potentially cancelled or amended by the PTO. Enovate did not file an opposition, and Judge Stearns granted Definitive's motion to stay.

Intellectual Ventures I, LLC v. Lenovo Grp. Ltd., No. 16-cv-10860-PBS (D. Mass. Mar. 13, 2019) (Saris, C.J.); Intellectual Ventures I, LLC v. NetApp, Inc., No. 16-cv-10868-PBS (D. Mass. Mar. 13, 2019) (Saris, C.J.)

Intellectual Ventures ("IV") sued Lenovo and NetApp ("Defendants"), alleging infringement of U.S. Patent No. 6,516,442, which is directed to a type of computer architecture known as a symmetric multiprocessor system or shared-memory multi-processor system. The parties disputed the claim construction of three terms: "packet," "error correction," and "error correction code."

"packet"

Defendants sought to construe "packet" to mean "a basic unit of transport over a channel." In support of their proposed construction, Defendants cited a section of the specification titled "Channel Overview and Terminology" which states: "A '€˜packet' is the basic unit of transport of the Channel." Defendants argued that where, as here, the patentee acted as his own lexicographer and explicitly defined a claim term in the specification, the patentee's definition controls.

IV argued that "packet" should be construed to mean "a formatted transmission unit including at least data and control information." IV asserted that the '442 patent should be understood in the context of a "computerized packet switching network." Relying on technical dictionary definitions and expert testimony, IV argued that a person of ordinary skill in the art would understand that in "packet switching" networks, packets must at least include data and control information for the system to function.

The Court agreed with Defendants that the patentee acted as his own lexicographer. In its analysis, the Court found three factors particularly persuasive. First, the patentee set off the term "packet" in quotation marks. Second, the term "packet" is followed by "is," indicating that what follows is a definition. Third, the definition appears in the specification under the heading, "Channel Overview and Terminology," indicating the inventor's intent to define the term. The Court rejected IV's proposed construction because the extrinsic evidence on which it relied impermissibly contradicted the patentee's express definition of "packet." Accordingly, the Court adopted Defendants' proposed construction, "a basic unit of transport over a channel."

"error correction"

Defendants argued that the ordinary meaning of "error correction" means the "reconstruction of erroneous data," or must include at least correcting erroneous data in a packet via the reconstruction of errors. IV asserted that "error correction" must not exclude the possibility of corrected errors using a retry request. In IV's view, "error correction" must include both reconstruction and retry because dependent claims 2 and 25 recite a technique of "error correction" using a retry protocol.

Once again, the Court agreed with Defendants and construed "error correction" to mean "correcting errors in data by at least reconstructing erroneous data." The Court looked first to the specification and noted that it distinguished between "error correction" and "retry" protocols. Then, it applied the doctrine of claim differentiation, under which dependent claims are presumed to be of narrower scope than the independent claims from which they depend. In this case, dependent claims 2 and 25 are narrower in scope than independent claim 1 because claim 2 requires a system configured to add error correction codes to the packet to transfer a retry request "if one of the packets being received has an error" and claim 25 requires a method comprising adding error correction codes, checking error correction codes, and "transferring a retry request." Thus, the Court found that "error correction" in claim 1 is different from correcting errors via a retry protocol.

"error correction code"

As to the term, "error correction code," the parties' dispute centered on whether error correction codes are used in the claimed system only to detect the presence of errors in a data packet, or whether the codes can also be used by the various interfaces to actually correct errors in the data. IV's proposed construction was "a code that can be used to identify the presence of erroneous data in a packet," whereas Defendants proposed construction was "a code that can be used to correct erroneous data."

The Court, finding that IV was judicially estopped from making its argument concerning the proper construction of "error correction code," adopted Defendants' proposed construction. In a previous litigation, IV successfully argued for the exact construction that Defendants proposed here: a "code that can be used to correct erroneous data." Because IV's current position is inconsistent with its previous litigation position, the Court found that IV was estopped from asserting that error correction codes in the '442 patent should only be able to detect, and not correct, erroneous data.