Federal Judiciary

Summary Judgment Granted in Part in Patent Case re: Situs of Infringement

By Michael Smith

Renhcol Inc. v. Don Best Sports, --- F.Supp.2d ----, 2008 WL 1885522(E.D.Tex. Apr 28, 2008) (NO. 2:06-CV-318)
Judge: Leonard Davis
Holding: Defendants' Motion for Summary Judgment GRANTED IN PART
I'm a little fuzzy on the technology in this patent case, but as best I can tell, it deals with a method and apparatus for facilitating transactions between prediction suppliers and prediction consumers.  Online Ouija boards, maybe?  Online bookies?  Anyway, the issue here was where the activity was taking place for purposes of determining infringement, and the case the Court kept citing was NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 1313 (Fed.Cir.2005).  Defendants claimed they do not make, use, sell, or offer for sale the claimed invention within the United States and that they do not import the claimed invention into the United States, as the computer storage medium and computer code are allegedly located in Canada and the method steps are performed in Canada and Ireland, and moved for summary judgment of noninfringement on that basis.
Judge Davis held that the handicappers and prediction consumers control the execution of the code on the alleged computer storage medium and programmed computer and benefit from the code's execution. As some handicappers and prediction consumers access the accused websites from the United States (you think?), the situs of use of the allegedly infringing computer storage medium is the United States.  Judge Davis also identified a number of fact issues which precluded summary judgment, including the location of the allegedly infringing code. 
Judge Davis ended up granting (1) Defendants' motion as to whether they make, sell, or offer for sale within the United States the invention claimed in claims 23, 24, and 25 and whether Defendants import into the United States the invention claimed in claims 23, 24, and 25; and (2) Defendants' motion as to whether Defendants use within the United States the invention claimed in claim 25 and whether Defendants infringe claim 25 under 35 U.S.C. § 271(b) and (c).  Judge Davis denied, however, Defendants' motion as to whether Defendants use within the United States the invention claimed in claims 23 and 24 and whether Defendants infringe claims 23 and 24 under 35 U.S.C. § 271(b) and (c).
Interestingly, there is no word as to whether the online prediction apparatus predicted the outcome of this motion correctly. 

Full post as published by Eastern District of Texas Federal Court Practice on May 02, 2008 (boomark / email).