PublishedJune 8, 2017

ContentGuard: Arguendo

Today, we watched as a man stood in front of a panel and explained how the other side had behaved improperly and how the decisions they made were incorrect and contrary to applicable legal standards.

I’m speaking, of course, of the ContentGuard oral arguments.  What did you think I was talking about?

Oral Argument at the Federal Circuit

Oral argument at the Federal Circuit is a pretty brief affair.  You stand in front of your panel of three judges.  You have fifteen minutes, split as you choose between your opening and your rebuttal.  Opposing counsel gets the same.

Fifteen minutes isn’t a lot of time to get through multiple issues, so you’re going to have to pick and choose what’s most important to you and have the rest come in through your briefs.  In the ContentGuard cases, the arguments focused primarily on the claim construction dispute over “usage rights” and a couple procedural disputes.

It did not go well for ContentGuard.

Claim Construction

ContentGuard v. Apple was up first.  At the outset, Judges Dyk and Reyna expressed some confusion as to what ContentGuard actually wanted the claim construction to be, and whether “attached” and “associated” meant the same thing.  ContentGuard’s counsel at first asserted they meant something different, but the judges pointed out he’d said they meant the same thing in the district court.  Judges Dyk and Wallach expressed some skepticism that ContentGuard’s claim construction issue was handled correctly in terms of procedure, going so far as to instruct ContentGuard’s counsel that “you have to put it in your brief” and “you have to object at the time.”

To put it bluntly: when a judge feels the need to instruct you on basic points of trial or appellate procedure, things are probably not going your way.

Counsel for Apple then stood up to address the claim construction issue.  Apple pointed out that, regardless of ContentGuard’s procedural failures, the intrinsic and extrinsic evidence strongly supported the district court’s construction.

On rebuttal, ContentGuard took another shot at convincing the judges that they had actually appealed the “attached” part of the construction.  It didn’t work any better the second time.

If I was a betting person, I’d bet that this case is resolved essentially entirely on the claim construction point, with the Federal Circuit upholding the construction and thus upholding the non-infringement verdict.

Practicing the Prior Art

In the ContentGuard v. Google portion of the morning, the focus shifted to a dispute I haven’t focused on much this week, a dispute over whether Google had improperly put on a “practicing the prior art” defense.  This type of defense is where you say “I don’t infringe because I’m doing exactly what some piece of prior art said to do.”  While it’s logical to make this argument (because if you’re doing what the prior art does, and you infringe, then the patent must logically be invalid), you’re not actually allowed to make it in quite that fashion.  Instead, you have to say that “we don’t infringe because the product is different from the patent” and then you can argue that “if we do infringe, then the prior art is the same as the patent so it’s invalid.”

ContentGuard asserted that Google had compared their product to the prior art.  This argument didn’t go any better than the claim construction argument had.  Judges Wallach and Dyk were skeptical the argument had been made at all, and pointed out that Google seemed to have properly argued that the products didn’t include all of the patent limitations, the proper approach.  Given the opportunity to object at trial and the presence of a jury instruction on the topic, the judges didn’t seem to take ContentGuard’s complaint too seriously.

In response, Google explained how they had showed a difference between their product and the patent.  They also addressed the issue of whether ContentGuard had shown any non-conclusory evidence that their products had “physical integrity.”  If they haven’t, as Google alleged, then ContentGuard would lose on that issue independent of the claim construction dispute.

Whither § 101?

Google talked a bit at the end of their time about whether ContentGuard’s patents were invalid under 35 U.S.C. § 101.  Google addressed Judge Gilstrap’s decision, which focused on the required integrities, and Google’s point was that if those integrities are just functions that have to be performed, not specific ways of doing so, then the claim looks even more like an abstract idea.

However, the judges then asked whether they needed to address § 101 if they found non-infringement.  Counsel for Google said no.  Given that, my guess is that the decision won’t address the validity issues at all.

I Read A Bunch About This Case—So What?

I said it at the outset—this is a typical patent case.  It’s unlikely to result in any huge changes in the law.  But when a small business gets sued, this is what they’re facing.  When a large company talks about being the defendant in 10 or 20 cases a year (or more), imagine this multiplied tenfold or more.

Patent litigation is expensive and complex.  It requires innocent defendants to expend significant resources to defend themselves in the hope, not of getting back to where they started, but of not having to spend too much to clear up the matter.

The fact that this is what typical patent litigation looks like is why patent reform is so important.

Josh Landau

Patent Counsel, CCIA

Joshua Landau is the Patent Counsel at the Computer & Communications Industry Association (CCIA), where he represents and advises the association regarding patent issues.  Mr. Landau joined CCIA from WilmerHale in 2017, where he represented clients in patent litigation, counseling, and prosecution, including trials in both district courts and before the PTAB.

Prior to his time at WilmerHale, Mr. Landau was a Legal Fellow on Senator Al Franken’s Judiciary staff, focusing on privacy and technology issues.  Mr. Landau received his J.D. from Georgetown University Law Center and his B.S.E.E. from the University of Michigan.  Before law school, he spent several years as an automotive engineer, during which time he co-invented technology leading to U.S. Patent No. 6,934,140.

Follow @PatentJosh on Twitter.

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