Fish Wins Summary Judgment for TomTom, Inc.

August 10, 2009 - Fish & Richardson has won a summary judgment of invalidity for TomTom, Inc. in a patent case brought by Encyclopaedia Britannica Inc. over two patents for computerized map-viewing systems. Judge Lee Yeakel of the U.S. District Court for the Western District of Texas granted the motion for summary judgment on August 4, 2009 because of a break in the chain of priority for the patents in the lawsuit.

The case began in May 2007 when Britannica sued TomTom, Magellan Navigation Inc., and a local Wisconsin-based defendant in the Western District of Wisconsin. Fish successfully had the case moved to the Western District of Texas where Britannica had already sued five other defendants over the same two patents - U.S. Patent Numbers 7,051,018 and 7,082,437 - in 2006.

"This was total victory for TomTom. Not only did we win the summary judgment, but we were able to litigate the case in an extremely cost-effective way. The facts relating to the chain of priority issue were in the public record, so we filed the summary judgment motion early in the case - before fact discovery had begun - and got the judge to stay the case while the motion was considered. Not having to do discovery saved our client a lot of money, which makes this a big win all the way around," said Lauren Degnan, the principal at Fish & Richardson who represented TomTom.

Britannica had argued in the case that the filing date of its patents should be 1989, citing a chain of priority that stretched through several patent applications. The judge agreed with Fish's findings that the chain was broken along the way, and found that the filing date of the patents was no earlier than 1994. Because Britannica had published a foreign patent application in 1991 - making it prior art - the judge ruled that the two patents at issue in the case were invalid.

The court entered final judgment and closed the case against TomTom and Magellan.