In a lengthy opinion issued November 19, Judge Brinkema of the EDVA held that a patent on a text messaging system for use in emergencies in remote areas was both anticipated and rendered obvious by the prior art. DeLorme Publishing Co., Inc. v. BriarTek IP, Inc., 2014 U.S. Dist. LEXIS 162197 (E.D. Va. Nov. 19, 2014), found here. While Judge Brinkema's decision is very fact-dependent, she relies on several legal principles which may be helpful to EDVA practitioners.

DeLorme and BriarTek are competitors in the market for satellite-based communications systems that allow a person in a remote area without cellular coverage to send short text messages in the event of an emergency. The patent at issue claimed a simple messaging system consisting of a user unit and a monitoring system that send text messages to each other via a satellite network.

DeLorme brought a declaratory judgment action asserting that it did not infringe and that the patent was invalid. DeLorme asserted three pieces of prior art: a published patent application for a satellite-based communication system for maritime use, an article about a military communications system for use in search and rescue missions, and a user guide for a Motorola hand-held satellite phone.

Judge Brinkema held that many of the patent's claims were anticipated as a matter of law by the maritime communications system and the military search and rescue system and that all of the claims were rendered obvious by various combinations of the three references.

Judge Brinkema's analysis is primarily focused on the particular facts of the case, but she cites a number of legal principles which we thought might be helpful to EDVA patent litigators, including:

  • A district court may adopt the non-moving party's claim construction for the purposes of evaluating a motion for summary judgment, citing Teknowledge Corp. v. Cellco P'ship, 626 F.Supp. 2d 1027, 1033 (N.D. Cal. 2009), aff'd, 374 Fed. App'x 972, 973 (Fed. Cir. May 6, 2010);
  • Unsupported, general or conclusory expert opinions or attorney argument that a reference does not teach a limitation are insufficient to withstand summary judgment, citing Krippelz v. Ford Motor Co., 667 F.3d 1261, 1269 (Fed. Cir. 2012);
  • An expert declaration "that something is black when the moving party's expert says it's white" is insufficient to create a factual dispute. There must be some foundation or basis for the opinion, citing Invitrogen Corp. v. Clontech Labs., 429 F.3d 1052, 1080 (Fed. Cir. 2005);
  • A patentee cannot prevent summary judgment by arguing that a reference lacks unclaimed features, citing King Pharm's., Inc. v. Eon Labs., Inc., 616 F.3d 1267, 1275 (Fed. Cir. 2010):
  • Anticipation by inherent disclosure is appropriate only when the prior art must necessarily include the unstated limitation, citing Transclean Corp. v. Bridgewood Servs., Inc., 290 F.3d 1364, 1373 (Fed. Cir. 2002);
  • Anticipation does not require actual performance of suggestions in a disclosure, only that those suggestions be enabling to one of skill in the art, citing Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1379 (Fed. Cir. 2001);
  •  A Court may determine that a claimed invention is obvious even without expert testimony, if the invention is "easily understandable," citing Wyers v. Master Lock Co., 616 F.3d 1231, 1239 (Fed. Cir. 2010).

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