In Intouch Technologies, Inc. v. VGo Communications, Inc., the patent dispute was about robots. InTouch and VGo both manufacture remote telepresence robot systems. In 2012, InTouch filed a First Amended Complaint in the Central District of California alleging that VGo’s remote telepresence robot system infringed several of its patents, including U.S. Patent Nos. 6,346,962 (“the ’962 patent”), 6,925,357 (“the ’357 patent”), and 7,593,030 (“the ’030 patent”). The asserted patents generally relate to remote telepresence technology regarding camera movement, arbitrating control of a robot, and a call back mechanism to notify a previously denied user that the robot is now available. VGo counterclaimed for declaratory judgment of non-infringement and invalidity.
After a jury trial, the jury returned a verdict of non-infringement of all three asserted patents. It also found claim 79 of the ’357 patent and claim 1 of the ’030 patent invalid based on obviousness. The district court subsequently denied motions for judgment as a matter of law and a new trial regarding non-infringement, invalidity, and evidentiary rulings.
InTouch appealed from the district court’s final judgment of non-infringement and invalidity, and denial of the post-trial motions for JMOL on those questions. InTouch also appealed from its motion for a new trial based on two allegedly erroneous evidentiary rulings, one which InTouch says tainted the infringement verdict and another which InTouch says calls into question the integrity of the invalidity judgments. The Federal Circuit, in an opinion authored by Judge O’Malley, affirmed the judgment of non-infringement of the asserted patents and the denial of the motion for a new trial on infringement. The Federal Circuit, however, reversed the findings of invalidity regarding the ’357 and ’030 patents, and remanded to vacate the district court’s invalidity judgments, which means those patent claims live to fight another day.
On appeal, the parties only disputed the construction of three claim terms. InTouch challenged the district court’s construction of the ’030 patent claim term “arbitrating to control” and the ’357 patent claim terms “arbitrator” and “call back mechanism.”
With respect to “arbitrator” and “arbitrating,” the Federal Circuit, like the district court, found that InTouch’s proposed construction was not supported by the disclosure and was too narrow. Claim 79 of the ’357 patent states “an arbitrator that can control access to said mobile robot by said first and second remote stations,” and claim 1 of the ’030 patent states “arbitrating to control access to the robot by either the first remote station or the second remote station.” Therefore, the claim language itself requires that the arbitrator control access to the robot by remote terminals. Consequently, the Federal Circuit found that the district court properly construed the terms “arbitrator/arbitrating” to require a determination of which user has the right to exclusive control or which user’s command to follow.
With respect to the term “call back mechanism,” InTouch argued that the plain language of the claim does not foreclose other users from receiving a call back message and that the insertion of the word “specific” into the construction improperly reads into the claim a requirement that the mechanism must send a message to one-and-only-one user. The Federal Circuit disagreed, finding that the plain language of the claim supported the district court construction. More specifically, the Federal Circuit pointed out that the phrase, “call back mechanism,” on its face connotes an intention to call back a user that was previously denied access. Therefore, the call back mechanism must require knowledge of who the user is, and whether that user requested and was denied access.
With respect to infringement, VGo demonstrated at trial that there was no way using their system that a user could connect to a robot after another user had already connected to that robot. While InTouch took issue with this testimony provided by VGo, the Federal Circuit pointed out that the jury was well within their right to rely upon the testimony offered by VGo and even outright reject the testimony of InTouch. As Judge O’Malley pointed out, the role of the Federal Circuit is only “to determine whether there was substantial evidence upon which the jury could predicate its non-infringement judgment.”
On the issue of invalidity, the Federal Circuit cited numerous problems with the testimony of VGo expert Dr. Yanco, which made it impossible to find evidence substantial enough to support an obviousness finding. The Federal Circuit cited the infirmities, saying the expert failed “to: (1) identify sufficient reasons or motivations to combine the asserted prior references; (2) focus on the relevant time frame of 2001; or (3) consider any objective evidence of nonobviousness. Dr. Yanco’s testimony was nothing more than impermissible hindsight….”
Finally, InTouch took issue with testimony offered by VGo that they did not think they were infringing, which was based on an opinion from outside counsel. The district court did instruct the jury that it is possible to infringe a patent even if you did not think you were infringing. Therefore, the Federal Circuit agreed with the district court that it is unlikely that the testimony on outside counsel’s opinion factored into the jury’s infringement verdict.
Tags: CAFC, Federal Circuit, Judge O'Malley, patent, patents
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