Delaware Patent Litigation Report : Delaware Intellectual Property Lawyer & Attorney : Morris James Law Firm : Delaware Patent Litigation Report

The patent-in-suit pertains to a simple, inexpensive system for limiting the use of a downloaded video program purchased by a customer.  A central station transmits a video product to a customer at a user site.  The claims are directed to transmitting a video product and limiting data, decoding the limiting data, storing this limiting data, and then subsequently either blocking access to or erasing the video product if it is determined that the viewing limits are exceeded.  Plaintiff asserts that the defendant’s video-on-demand service either literally or under the doctrine of equivalents.  Defendant contends that it does not literally infringe claim 1 because it does not perform any of the steps of the claim.  In particular its product does not perform the “transmitting” and “decoding” steps.  Defendant contends that the remaining steps were performed by another user.  The Court’s decision on the “transmitting” limitation turns, in part, on the construction of a term not previously identified as disputed and therefore was not considered at the prior Markman hearing.  After construing the newly contested term, the Court grants defendant’s motion to the extent it seeks summary judgment on the issue of literal and DOE infringement. Summary judgment of non-infringement is not warranted on the basis of defendant’s not performing the “decoding” step of the claim.  Next the Court considers whether defendant’s software can be considered part of a unitary system that is controlled or directed by defendant.  Plaintiff has pointed to sufficient evidence suggesting that defendant retains control over its software such that summary judgment on this basis is not warranted.  As to Claim 2, the Court will grant defendant’s motion for summary judgment given plaintiff’s failure to offer expert testimony on this issue.  Plaintiff’s motion for partial summary judgment is denied.