Patent And Trademark Bulletin For The District Of Massachusetts - February 2013

A reporter on recent patent and trademark opinions from the United States District Court for the District of Massachusetts

PATENT

In re Body Science LLC Patent Litigation, MDL No. 12-2375-FDS, 2012 WL 5449667 (D. Mass. Nov. 2, 2012) (Saylor, D.J.) [Stay Pending Reexamination]

Plaintiff Body Science LLC ("Body Science") filed patent infringement actions against a number of defendants, which have been consolidated for pretrial purposes into a single multi-district litigation ("MDL"). Body Science asserts that Defendants' products infringe U.S. Patent Nos. 6,289,238 ("the "238 patent") and 7,215,991 ("the "991 patent"). After the start of discovery, defendant Philips Electronic North America Corporation ("Philips") filed a request for ex parte reexamination of both patents-in-suit. Philips then moved to stay the case pending reexamination. Judge Saylor granted the motion.

In deciding whether a stay of litigation pending reexamination is appropriate, the court looks to three factors: (1) whether a stay would impose undue prejudice or present a clear tactical disadvantage to the non-moving party, (2) whether a stay would simplify the issues, and (3) the stage of the litigation. Judge Saylor also considered cases from the Northern District of California and the Eastern District of Texas expressing "a liberal policy in favor of granting motions to stay proceedings pending the outcome of reexamination."

With respect to the issue of undue prejudice, the Court acknowledged that it was likely that the case would be stayed for at least one year. Nonetheless, "mere delay, without more, does not constitute undue prejudice." Moreover, to avoid any potential loss of evidence during the stay period, the Court structured the stay to require parties to preserve relevant evidence and allow the taking of depositions of any witnesses who likely are to become unavailable. The Court also rejected Body Science's claim that the grant of a stay in this case would promote the use of reexamination proceedings as a litigation tactic merely to delay patent lawsuits.

In examining whether a stay would simplify the issues, Judge Saylor looked to the statistics from the USPTO concerning reexaminations. He found that, "statistically, it is more likely than not that at least some claims will be narrowed or invalidated."

Because the case was in its infancy - some initial discovery had been served, but claim construction briefing had not commenced - the stage-of-the-litigation factor weighed in favor of a stay.

Everyscape, Inc. v. Adobe Systems, Inc., C.A. No. 10- 11597-RGS, 2012 WL 5389735 (D. Mass Nov. 5, 2012) (Stearns, D.J.) [Claim Construction]

Plaintiff Everyscape filed suit against Defendant Adobe Systems ("Adobe") alleging infringement of U.S. Patents Nos. 7,327,374 ("the "374 patent") and 7,593,022 ("the "022 patent"). Adobe counterclaimed, alleging EveryScape infringed U.S. Patents Nos. 6,411,742 ("the "742 patent") and 7,095,905 ("the "905 patent"). The District Court (Stearns, D.J.) settled claim construction disputes for various terms in the four patents.

Everyscape's patents are directed to "clone brushing" which involves copying and pasting different portions of a digital image from one region of an image to another. The "374 and "022 patents improve on clone brushing by using a "homography" to map an image from the source image to an intermediate "world plane." The mapping can be used to paste the copied portion to a destination image at an appropriate scale that matches the scale of the destination image.

The two terms construed from the "374 and "022 patents were "homography" and "source position." Everyscape argued "homography" should be construed as "a linear mapping between a world plane and an image plane." Adobe countered that the proper construction was "a 2D projective transformation." Both parties pointed to different portions of the specification, with Adobe arguing that using the term "i.e." signals an intent to define a word and Everyscape countering that using an "em dash" can also signal a definition. The Court looked past these arguments, holding that nothing in the intrinsic record indicated "homography" was being used differently than its customary meaning. Also, the Court noted that the provisional application that the Everyscape patents claimed priority to, which appeared to be the Ph.D. thesis of one of the inventors, cited to a classic algebraic geometry text to define the term. The Court then used the provisional application's definition, and an understanding of how the claimed invention worked, to conclude that the proper construction was a combination of both parties' constructions: "a 2D projective transformation that determines a linear mapping between an image and a world plane."

For the next term, Everyscape argued that "source position" should be construed as "a position that is selected by a user independently of a destination position." Adobe responded that "source position" does not need to be construed, and alternatively, should be construed as "a position from which image information is copied." The Court agreed with Adobe that Everyscape's construction improperly imported limitations from a preferred embodiment and that it did not capture the main aspect of the term - that it is the "source" of the image. The Court construed the term as "a position different from the destination position, relative to which image information is copied."

Adobe's patents are directed to merging multiple digital images to form a combined image, such as forming a panoramic image from multiple digital pictures. The parties disputed the phrase "mask out part of the image" from the "905 patent. Everyscape argued the phrase should be interpreted to mean "set the mask value of the pixels in the part of the first image corresponding to the first portion of the second image to be "0'." The Court again found that the construction would improperly import limitations from a preferred embodiment, and instead adopted the specification's description of the term: "obstruct part of the first image." In making its ruling, the Court quoted Intervet Am., Inc. v. Kee-Vet Labs., Inc., 887 F.2d 1050, 1053 (Fed. Cir.1989): "interpreting what is meant by a word in a claim "is not to be confused...