Patent Infringement, Summary Judgment, and Infringement Contentions

A patent infringement defendant’s motion for summary judgment of non-infringement was denied where there were questions of fact concerning whether the defendant directly infringed asserted claims when it tested the accused system, even if it did not directly infringe otherwise. Ameranth, Inc. v. Papa John’s USA, Inc., No. 12-CV-729 JLS (NLS), 2013 U.S. Dist. LEXIS 74808 (N.D. Cal. March 26, 2013). Alternatively, there was a question of fact under Centillion Data Sys., LLC v. Qwest Communs. Int’l., 631 F.3d 1279 (Fed. Cir. 2011) concerning whether the defendant had “put the invention into service,” in which case the defendant could qualify as a direct infringer.

The plaintiff, Ameranth, had sued the defendant, Papa John’s, and numerous other parties, alleging infringement of U.S. Patent Nos. 6,384,850, 6,871,325, and 8,146,077, which generally claimed “an information management and synchronization software system relating to the placement of orders by consumers over the internet through the use of wireless handheld devices.” The defendant moved for summary judgment, arguing that it was not a direct infringer, and also that the plaintiff’s infringement contentions were inadequate.

The accused system was an ordering system used by Papa Johns and its customers. The claims included a recitation of “at least one wireless handheld computing device on which hospitality applications and data are stored.” On this basis, the defendant argued that the wireless device would have been used by its customers, and that the plaintiff had failed “to identify an actor that uses all portions of the claimed invention or combines all the elements.” However, the court agreed with the plaintiff that there was a genuine question of “fact as to whether Papa John’s is a direct infringer because it is in control of all elements of the claimed system when it tests its system on new or existing mobile devices and mobile software.”

Alternatively, the plaintiff had argued that its patents, “in contrast to the patent in Centillion, do not require a ‘processing means’ that has to be ‘put into service.'” Acording to the plaintiff, the accused system here was used not just by “the front-end consumer but [also by] the back-end provider who controls the synchronization of data.” The court agreed that “further factual discovery is required to determine the scope and use of the accused system.”

The defendant had also argued that the plaintiff’s infringement contentions were insufficient. The defendant’s arguments centered around the contention that the plaintiff had not sufficiently identified “hospitality applications” in the accused system; the claims recited “hospitality applications” stored on mobile devices and in a central database. However, the plaintiff’s infringement contentions did address hospitality applications, which was enough for the court to conclude that the defendant’s argument really boiled down to one of claim construction, and was premature.

At least one of the defendant’s arguments appears to have been pretty strong on its face, and highlights the difficulties of obtaining early summary judgment in a patent infringement case. The defendant had argued “that Ameranth has failed to identify ‘hospitality applications’ because the claim requires multiple applications on a single handheld device, and only one such application exists for any such given device in the accused system.” In response, the court noted that the plaintiff had proposed to define “hospitality applications: as “one or more application software programs enabled to present information to a user via a user interface regarding reservations, frequency, ticketing, wait lists, food/drink ordering, payment processing or other services provided in the hospitality industry.” In other word, the plaintiff was able to create a genuine issue of material fact by arguing that the plural could be read as the singular.

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