09/01/14

Intouch Technologies, Inc. v. VGO Comm., Inc.: Non-Infringement of Telepresence Robot Patent Upheld, But Invalidity Finding "not even close" to Sufficient


Category: Infringement 
 
 
 
By: Samuel Dillon, Contributor 
 
TitleIntouch Technologies, Inc. v. VGO Comm., Inc., No. 2013-1201 (Fed. Cir. May 9, 2014).
Issues
[1] Claim construction[Whether the district court erred in construing] the ’030 patent claim term [a] “arbitrating to control” and the ’357 patent claim terms “arbitrator” and [b] “call back mechanism.”
InTouch at *17 (text added).
[2] Infringement[Whether the district court was correct to find that] all three [jury] verdicts of non-infringement [were] supported by substantial evidence [when considering certain] limitations: [a] arbitrator/arbitrating, [b] call back mechanism, [c] camera movement [...]
Id. at *22 (text added).
[3] Invalidity[Whether the district court was correct to find] that the record supports the jury’s verdict of invalidity for the ’357 and ’030 patents.
Id. at *33 (text added).
Holdings
[1] Claim construction
[a: Arbitrator/Arbitrating] [I]t is clear that, for the arbitrator to control access, it needs the capability to consider and resolve access requests from and among multiple users. . . . For these reasons, we conclude that the district court did not err in construing the terms “arbitrator” and “arbitrating” to require a determination of which user among multiple users has exclusive control of the robot.
InTouch at *18-19.
[b: Call Back Mechanism] The plain language of the claim supports the district court’s construction. The phrase, “call back mechanism,” on its face connotes an intention to call back a user that was previously denied access.
Id. at *20.
[2] Infringement
[a: Arbitrator/Arbitrating] Because others cannot access the robot until the user releases control, the VGo system never considers and resolves competing requests for that robot, and thus, does not “determine” which user has exclusive control of the robot. Consequently, the VGo system lacks an “arbitrator.”
Id. at *24.
[b: Call Back Mechanism] [T]he VGo system cannot even identify any user that wants access, and it certainly does not know who may have previously sought access, but was denied. . . . Based on these conclusions, we find that substantial evidence supports the jury’s finding of non-infringement of claim 79 of the ’357 patent.
Id. at *30.
[3] InvalidityWhile our standard of review regarding the jury’s implied factual findings is a stringent one, we agree with InTouch that the evidence on which VGo relies is not substantial enough to support an obviousness finding. Indeed, it did not even come close. Dr. Yanco’s testimony was plagued with numerous problems, including her failure 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; she opined that all of the elements of the claims disparately existed in the prior art, but failed to provide the glue to combine these references.
Id. at *34-35.
 
 
 
Procedural History
On November 4, 2011, InTouch filed a complaint alleging VGo’s remote telepresence robot system infringed the ’962 and ’357 patents. On April 27, 2012, InTouch filed a first amended complaint adding a claim alleging infringement of the ’030 patent. In response, VGo counterclaimed for declaratory judgment of non-infringement and invalidity of the asserted patents.
InTouch at *12 (citations omitted).
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 (“JMOL”) and a new trial regarding non-infringement, invalidity, and numerous evidentiary rulings.
Id. at *2.
 
 
Legal Reasoning (Rader, Lourie, O'MALLEY)
Background
The world has come a long way; this is a patent case about robots. InTouch [and VGo] both manufacture remote telepresence robot systems. . . . 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.
InTouch at 2.
[1] Claim construction
Standard of Review and LawClaim construction is a question of law reviewed de novo. . . . To determine the scope and meaning of a claim, we examine the claim language, written description, prosecution history, and any relevant extrinsic evidence. Generally, a claim term is given the ordinary and customary meaning as understood by a person of ordinary skill in the art at the time of invention. We must read claims in view of the specification, which “is the single best guide to the meaning of a disputed term.”
InTouch at *16-17 (citations omitted).
[a] Arbitrator / Arbitrating
Contested claim languageClaim 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.”
Id. at *18 (emphasis added).
InTouch's proposed construction
InTouch challenges the district court’s construction of the ’030 patent term “arbitrating to control” as “determining which remote station has exclusive control of the robot,” and the ’357 patent claim term “arbitrator” as “a device that determines which user or station has exclusive control, or which user’s commands the robot should follow.” InTouch argues that the district court should have adopted its proposed construction for arbitrator as “a device that allows exclusive control of the mobile robot by one of the remote stations.”
Id. at *17-18 (emphasis added).
District Court's construction is properLike the district court, we find InTouch's proposed construction "inaccurate and too narrow." . . . The claim language itself requires that the arbitrator control access to the robot by remote terminals. The written description explains that the arbitrator needs to “resolve access requests from the various users,” not simply allow access. . . . Based on this context, it is clear that, for the arbitrator to control access, it needs the capability to consider and resolve access requests from and among multiple users. . . . For these reasons, we conclude that the district court did not err in construing the terms “arbitrator” and “arbitrating” to require a determination of which user among multiple users has exclusive control of the robot.
Id. at *18-19.
[b] Call Back Mechanism
Contested claim languageClaim 79 of the ’357 patent recites “a call back mechanism that informs a user that was denied access to said mobile robot that said mobile robot can be accessed.”
Id. at *20.
InTouch's proposed constructionInTouch asserts that the district court also incorrectly construed the term “call back mechanism,” as used in the ’357 patent, to be “a device that sends a message to a specific user who previously was denied access to a particular mobile robot that the same mobile robot can now be accessed.” . . . InTouch says the key issue is “whether the term requires a message directed to one-and-only-one user who was denied access, or whether such message may additionally be received by other authorized users.”
Id. at *19-20.
District Court's construction is properThe plain language of the claim supports the district court’s construction. The phrase, “call back mechanism,” on its face connotes an intention to call back a user that was previously denied access. To call back a user, the call back mechanism requires knowledge of who the user is, and whether that user requested and was denied access, i.e., knowledge of which specific user or users fall into that category. . . . The written description reinforces the notion that the call back mechanism must message a specific user by distinguishing the call back mechanism from a notification mechanism. . . . The prosecution history of the ’357 patent removes any remaining doubt that the call back mechanism requires a message to a specific user that requested and was denied access. . . . During reexamination, the applicants described the call back mechanism repeatedly, explaining that it contemplates a request from a user, that user being denied access, and that specific user receiving a call back message when the robot becomes available. . . . For these reasons, we conclude that the proper construction of the term “call back mechanism” requires “a device that sends a message to a specific user or users who previously were denied access to a particular mobile robot that the same mobile robot can now be accessed.”
Id. at *20-22.
[2] Infringement
[a] Arbitrator / Arbitrating
InTouch's argumentInTouch argues that the VGo robot “determines” which pre-authorized user has exclusive control based on “first-come/first-served” rules and thereby precludes others from gaining access. InTouch further alleges that the term “determines” means “regulates” without any active decision making, and that the VGo system “automatically determines which user controls the robot.”
InTouch at *23.
VGo's robot does not include the claimed "arbitrator"We disagree with InTouch that the VGo system “determines” which pre-authorized user has exclusive control. By asking that we define “determines” as it proposes, InTouch seeks to back into a construction of the claim limitation “arbitrator” which we have already rejected. . . . InTouch concedes that “[t]he VGo system grants the first requesting user control of that robot to the exclusion of others on the list” and “the VGo system prevents other users from accessing the ‘Busy’ robot until the user releases control.” Because others cannot access the robot until the user releases control, the VGo system never considers and resolves competing requests for that robot, and thus, does not “determine” which user has exclusive control of the robot. Consequently, the VGo system lacks an “arbitrator.”
Id. at *23-24 (citation omitted).
Non-infringement supported by substantial evidenceVGo submitted the testimony of Mr. Ryden [who] showed that the VGo system makes no “decision” as to which user can connect and control the VGo robot because the system simply provides exclusive control to the first requesting user. He confirmed that there is no way that a user can connect to a robot after another user has already connected to that robot, and that the VGo system does not even know that somebody else wants to connect to that robot.
Id. at *24 (citation omitted) (text added).
Doctrine of EquivalentsInTouch’s objections to the jury’s non-infringement finding under the Doctrine of Equivalents (“DOE”) fare no better. . . . As VGo points out, the jury was free to believe that the VGo system does not resolve competing requests for control of the robot based on the substantial evidence of that fact submitted by VGo as outlined above. . . . Based on the evidence submitted, we conclude that the jury reasonably could have found that the VGo system does not infringe the claimed “arbitrator” limitation of claim 79, either literally or under the DOE.
Id. at *25.
[b] Call Back Mechanism
InTouch's argumentInTouch argues that the VGo system includes a “call back mechanism” because the VGo robot sends an availability message to all authorized users, including any previously denied access, informing them the robot can be accessed when a user surrenders control of a robot by changing the status indicator button from red to green. InTouch claims that “[i]t is legally irrelevant that the message is received by multiple users, rather than one-and-only-one ‘specific’ user.”
Id. at *26.
Non-infringement supported by substantial evidenceAs discussed above, we confirmed the district court’s construction of the term “call back mechanism” as “a device that sends a message to a specific user or users who previously were denied access to a particular mobile robot that the same mobile robot can now be accessed.” . . . [T]he system can send a message to every specific user that requested access and was denied, but the users must be targeted based on their prior efforts to access the robot. . . . The jury had substantial evidence upon which it could conclude that the VGo system lacks a “call back mechanism.” . . . [VGo's expert] testified that the VGo system does not have the ability to recognize whether any user has been denied access. In support, he explained that the green “call button” disappears when a user is connected to a robot, thereby prohibiting another user from even requesting access to the same VGo robot. Without this green “call button,” the VGo system cannot even identify any user that wants access, and it certainly does not know who may have previously sought access, but was denied. . . . Based on these conclusions, we find that substantial evidence supports the jury’s finding of non-infringement of claim 79 of the ’357 patent.
Id. at *26-27 (citations omitted) (text added).
[c] Actuating the camera
Contested claimClaim 1 of the ’962 patent discloses a method of controlling operations of a video conferencing system that includes the step of “actuating the camera associated with the video conferencing system in a direction indicated by the movement data.” Claim 8 of the ’962 patent requires a system for controlling operations of a video conferencing system, including “means for actuating the camera associated with the video conferencing system in a direction indicated by the movement data.”
Id. at *28.
InTouch's argumentInTouch argues that the “actuating the camera” claim limitation is satisfied because, when the pointer moves to the right of the center of the screen, the robot, inherently with the camera, moves right. It claims it does not matter that, when the pointer moves left, but stays to the right of the center of the screen, the robot/camera continues to move right, but more slowly. It alleges that the claim does not require “same” direction movement of the camera and pointer.
Id. at *28 (citation omitted).
District Court's claim constructionThe district court’s construction of the “actuating the camera” limitation resolves this dispute. . . . The district court construed the “means for actuating the camera associated with the video conferencing system in a direction indicated by the movement data” to have a function of “actuating the camera associated with the video conferencing system in a direction indicated by the movement data” and the structure as “computer software or a special purpose hardware-based computer system that moves the camera, as shown in Figures 4 and 5 and as described in Column 8:5-35.” Those portions of the written description . . . explain that “the video conferencing system determines the direction of motion of the pointing device [and] is then actuated to move in the direction indicated by the pointing device movement (block 96).” Thus, the step of “actuating the camera associated with the video conferencing system in a direction indicated by the movement data” requires a direct response by the camera in the direction indicated by the movement of the pointing device.
Id. at *29 (citations omitted) (text added).
VGo's system based on position data, not movement dataThe VGo system does not, in real-time, “determine the direction of motion of the pointing device” and “move the camera in the direction indicated by the pointing device movement.” Mr. Ryden testified that the VGo system does not send “movement data,” but, instead, relies on “position data.” . . . Mr. Ryden explained that . . . “[e]ven if I move the cursor to the left, if I’m on the right-hand side of the image it’s going to move right; so it’s all about the position where the cursor is on the screen.” As VGo’s system moves the camera based on data corresponding to the pointer’s position vis-à-vis the centerline, not the directional movement of the pointer, we find substantial evidence exists to support the conclusion that the VGo system lacks the “actuating the camera” limitation.
Id. at *30 (citations omitted).
[3] Invalidity
Law of ObviousnessObviousness is a question of law based on underlying factual findings: (1) the scope and content of the prior art; (2) the differences between the claims and the prior art; (3) the level of ordinary skill in the art; and (4) objective indicia of nonobviousness. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966). Courts must consider all four Graham factors prior to reaching a conclusion regarding obviousness.
InTouch at *31 (citation omitted).
InTouch's argumentsInTouch argues that VGo’s expert testimony was replete with errors because Dr. Yanco applied an incorrect legal standard, and failed to consider objective evidence of nonobviousness. In particular, InTouch asserts that VGo’s expert, Dr. Yanco, failed to identify any reason why one of ordinary skill in the art at the time of the invention would have sought to combine or modify the references. InTouch also submits that Dr. Yanco did not consider the objective indicia of nonobviousness, nor even know of the concept.
Id. at *34 (citation omitted).
VGo's expert testimony "not even close" to sufficientWhile our standard of review regarding the jury’s implied factual findings is a stringent one, we agree with InTouch that the evidence on which VGo relies is not substantial enough to support an obviousness finding. Indeed, it did not even come close. Dr. Yanco’s testimony was plagued with numerous problems, including her failure 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; she opined that all of the elements of the claims disparately existed in the prior art, but failed to provide the glue to combine these references. While she opined that the references were like separate pieces of a simple jigsaw puzzle, she did not explain what reason or motivation one of ordinary skill in the art at the time of the invention would have had to place these pieces together. And, she did not even factor the objective evidence of nonobviousness into her obviousness analysis.
Id. at *34-35.
VGo's obviousness rationaleVGo argued that claim 79 of the ’357 patent was obvious based on a combination of three references: (1) the Jouppi patent, (2) the Dudenhoeffer reference, and (3) the Roach reference. In support, VGo solely relied on the testimony of Dr. Yanco. . . . Dr. Yanco first testified . . . that she can combine Jouppi with Dudenhoeffer because Dudenhoeffer “is talking about what happens when you have multiple robots and you want to control them from different stations.” Elaborating further, Dr. Yanco explained that one of ordinary skill would combine Jouppi with Dudenhoeffer as “something that that person of ordinary skill in the state of art of the robotics will do,” because Dudenhoeffer “is providing a remote telepresence for that soldier.” Dr. Yanco then relied on the Roach reference for the call back mechanism [because] Roach discloses “doing things over the Internet,” and that since “robots are going over the Internet too; so that applies to them as well.” She then stated that she would combine Roach with the other references to let someone who cannot get access to a robot know that it became available . . . “[s]o when we take these three things and we look at them together, it covers Claim 79 of Patent ’357.”
Id. at *35-40 (citation omitted).
Deficiencies in DudenhoefferInTouch argues that [Dudenhoeffer] “does not disclose allocating exclusive control of a single telepresence robot between multiple control stations.” It alleges that Dudenhoeffer only discloses joint control of a micro-robotic swarm as a collective, rather than control of each and every individual robot. VGo . . . relies on Dr. Yanco’s testimony, where she opined that section 4.2.2 of Dudenhoeffer lists three levels of control, with the first level of control consisting of an interface with the individual robots. While Dr. Yanco alleges that these sections disclose an arbitrator mechanism like the one in the claimed invention, the Dudenhoeffer reference itself paints a different picture. . . . Contrary to Dr. Yanco’s assertions, Dudenhoeffer simply does not describe an arbitrator that determines which user or remote station has exclusive control of an individual robot. While the arbitrator in Dudenhoeffer does resolve conflicts, it does not determine which users may exclusively control an individual robot. . . . We find that there is no evidence, much less substantial evidence, from which the jury could conclude that Dudenhoeffer discloses the type of arbitrator claimed in the ’357 patent, notwithstanding Dr. Yanco’s conclusory opinion to the contrary.
Id. at *36-39 (citations omitted).
No articulated reasoning with rational underpinningEven assuming Dudenhoeffer disclosed the type of “arbitrator” claimed in the patent before us, there is insufficient evidence on this record of a reason or motivation for one of ordinary skill in the art at the time of the invention to combine Dudenhoeffer with Jouppi and Roach. . . . Dr. Yanco failed to provide the necessary “articulated reasoning with some rational underpinning” to support a conclusion of invalidity based on these combinations. . . . It appears that Dr. Yanco relied on the ’357 patent itself as her roadmap for putting what she referred to as pieces of a “jigsaw puzzle” together. VGo’s expert also succumbed to hindsight bias in her obviousness analysis. Dr. Yanco’s testimony primarily consisted of conclusory references to her belief that one of ordinary skill in the art could combine these references, not that they would have been motivated to do so. . . . Not once during Dr. Yanco’s direct examination regarding the ’357 patent did she analyze what one of skill in the art would have understood as of 2001. Dr. Yanco simply opined what a skilled artisan could accomplish in 2011; that is not the relevant inquiry.
Id. at *39-41 (citations omitted).
No consideration of objective evidence of nonobviousnessThere was, moreover, no effort by Dr. Yanco to guard against this hindsight bias by appropriately considering all objective evidence of nonobviousness. VGo does not dispute that Dr. Yanco ignored the objective evidence of nonobviousness. Indeed, Dr. Yanco testified that she did not realize she needed to consider this factor as part of her obviousness analysis. Dr. Yanco testified that she had not even heard of the concept of objective evidence of nonobviousness. . . . InTouch submitted evidence regarding the substantial commercial success of its product, widespread industry praise, and licenses. InTouch also provided expert testimony through Dr. Hackwood that there was a nexus between these objective indicia and the asserted claims. Given the many weaknesses in Dr. Yanco’s testimony, and VGo’s failure to persuasively rebut InTouch’s evidence of nonobviousness, either through Dr. Yanco, or otherwise, we find insufficient evidence to support the conclusion that VGo bore its burden of proving clearly and convincingly that claim 79 of the ’357 patent was obvious.
Id. at *41-42 (citations omitted).
Conclusion
[W]e affirm the judgment of non-infringement for all three asserted patents as supported by substantial evidence, reverse the findings of invalidity regarding the ’357 and ’030 patents, and remand to vacate those invalidity judgments.
InTouch at *47-48.
 
 
 
 
Contributor Notes
The Court discusses and ultimately dismisses as moot InTouch's request for a new trial based on supposed evidentiary errors.
See, generally, InTouch at *45-47.
 
 
 
 
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