Docket Nos. 2017-1016
LOURIE, O’MALLEY, TARANTO
October 20, 2017
Brief summary: DC entry of jury anticipation finding affirmed; finding of no infringement by Google was not reached by the FC panel.
Summary: Art+Com (“AC”) appealed DC entry of judgment after jury finding that Google did not infringe US RE44,550 “directed to methods for displaying geographic-i.e., topographic or meteorological-data, such as satellite images, to a user” and that each asserted claim is invalid as anticipated and/or obvious, as well as the DC’s denial of AC’s motion for JMOL. AC alleged “Google Earth, Version 7” and related software infringed the ‘550 claims. The ‘550 patent’s pre-AIA § 102(b) critical anticipation date is December 17, 1995. Google submitted evidence from an employee of Stanford Research Institute (SRI) that “he helped develop SRI TerraVision, ‘an earth visualization application’” (“part of the ‘MAGIC project,’…that focused on terrain visualization”) and “a 1994 VHS tape in which the narrator walks the viewer through the operation of SRI TerraVision”. Mr. Lau also testified that he demonstrated the system to an audience of more than 100 people at the 1994 MAGIC Technical Symposium” in 1994 and again at an August 1995 conference. Google’s expert witness provided his opinion “that SRI TerraVision anticipates the asserted claims.” The FC panel explained that “a motion for JMOL should be granted if either (1) ‘the jury’s factual findings, presumed or express, cannot be supported by substantial evidence,’ or (2) ‘the legal conclusions implied from the jury’s verdict cannot be supported by the jury’s factual findings’”, “viewing the evidence in the light most favorable to the non-moving party” (Minn. Min. & Mfg., FC 2002, quoting SIBIA, FC 2000). Further, “[a]nticipation is a question of fact, and a jury determination of anticipation is reviewed for substantial evidence” (Acromed, FC 2001) and under pre-AIA § 102(b) an anticipating public use…includes any use of the claimed invention by a person other than the inventor who is under no limitation, restriction or obligation of secrecy to the inventor” (Netscape, FC 2002; Dayco, FC 2003 (“reasonably understand or infer” every limitation is disclosed in single reference)). The FC panel was not persuaded by any of AC’s arguments that Lau’s testimony was “vague” and lacked corroboration (Finnigan, FC 1999), Google’s expert “cherry-pick[ed] selected excerpts to stitch together the claimed invention” and did not demonstrate each claimed limitation was disclosed, and SRI TerraVision was not “ready for patenting” (Pfaff, US 1998 (public must be able to “actually discern the patent invention”); Invitrogen, FC 2005). It concluded, for example, “the documentary and videographic evidence of record was sufficient to corroborate Lau’s testimony”, “the jury was entitled to believe Lau’s testimony”, Google’s expert opinions, and “that the claimed inventions were discernable in SRI TerraVision” (New Railhead, FC 2002 (“[a]n invention may be reduced to practice for purposes of the public use bar ‘even though it may later be refined or improved’”)). Thus, the DC anticipation decision was affirmed (infringement was not reached).