Virginia Lawyers Weekly VA Lawyers Weekly
In this patent infringement suit involving Internet “cookies,” an Alexandria U.S. District Court says plaintiff’s motion for summary judgment on defendants’ § 102 prior art invalidity defenses must be granted in part and denied in part.
Although neither party has moved for summary judgment with respect to whether the prior art references rendered the cookies invention claimed in the ‘670 patent obvious pursuant to 35 U.S.C. § 103(a), plaintiff, in its supplemental brief, argues that a determination on summary judgment that certain prior art references are not within the prior art as defined by § 102 nonetheless affects the obviousness analysis under § 103. More precisely, plaintiff argues that where, as here, certain putative prior art references are found not to satisfy any § 102 subsection, these materials may not be used to prove the patent’s invalidity for obviousness under § 103. In response, defendants contend that references that do not meet the conditions of § 102 may still be relevant to the obviousness analysis under § 103. Given this, it is appropriate in advance of trial to clarify whether and to what extent the Levergood patents and the Kristol, Holtman and Behlendorf proposals – which do not qualify as prior art under certain subsections of § 102 – may nonetheless be relevant to the § 103 obviousness analysis.
The court concludes here that the Levergood patents and the Kristol, Holtman and Behlendorf proposals – which technically are not prior art – are nonetheless relevant to proving the characteristics and understanding of an individual of ordinary skill in the art at the time of invention.
In sum, plaintiff’s motion for summary judgment on defendants’ § 102 prior art invalidity defenses must be granted in part and denied in part. The motion must be granted in part with respect to the Levergood patents and the Kristol, Holtman and Behlendorf proposals because the undisputed record establishes that the Levergood patent applications were not filed, and the Kristol, Holtman and Behlendorf proposals were not published, before the cookies technology claimed in the ‘670 patent was invented, i.e., ready for patenting. Put simply, defendants have not met their burden of presenting evidence on which a reasonable trier of fact could conclude, by clear and convincing evidence, that these purported references were in the prior art. Accordingly, these references cannot invalidate the ‘670 patent under an anticipation theory.
Yet, plaintiff’s motion must be denied in part with respect to the Freeman-Benson paper and the Soverain source code because record evidence – namely testimony and corroborating documents, which may be admissible at trial – would permit a reasonable trier of fact to conclude, by clear and convincing evidence, that these references were in the prior art. Notably, whether the Freeman-Benson paper and the Soverain source code actually anticipate the cookies technology by disclosing all the limitations claimed in the ‘670 patent is an issue not reached or addressed here, and hence will be litigated at trial.
Although neither party moves for summary judgment with respect to defendants’ § 103 prior art obviousness defense, the resolution of plaintiff’s motion on defendants’ § 102 prior art anticipation defense nonetheless implicates the obviousness analysis. Specifically, because the Levergood patents and the Kristol, Holtman and Behlendorf proposals do not technically qualify as prior art under a § 102 subsection, they are excluded from the scope and content of the prior art for purposes of § 103. Yet, these references may still be admissible to show the knowledge of a person of ordinary skill in the art at the time of invention.
Netscape Communications Corp. v. Valueclick Inc. (Ellis, J.) No. 1:09cv225, April 15, 2010; USDC at Alexandria, Va. VLW 010-3-219, 24 pp.
