ResQNet and Lasna Split Infringement Judgment

Posted on | May 22, 2008 | No Comments

2008-1365, 1366 ResQNet.com v. Lasna, Inc.
SD/NY 01-cv-3578

Both parties appeal part of Judge Robert Sweet’s judgment following a bench trial on ResQNet’s two remaining patents.  The parties split infringement findings, with ResQNet being awarded approximately $400k (net after a $100k sanction against it and counsel under Rule 11).

ResQNet sued Lasna on 5 patents related to configurable remote terminals for computer systems.  Two patents were voluntarily withdrawn, and the court construed claim terms for the others.  ResQNet stipulated to non-infringement and appealed.  In ResQNet II, the Federal Circuit affirmed as to one patent but reversed on the other two.

On remand here, the court conducted a bench trial on the 2 remaining issues: infringement of claim 1 of 5,831,608 and claim 1 of 6,295,075. 

’608 Patent:  Claim 1 states:

1. Apparatus for implementing a computer terminal to be connected to a remote computer, said apparatus comprising:

means for identifying a particular user logged on to said remote computer through said computer terminal;

means
for identifying, based upon a position. length and type of each of a
plurality of fields, a particular screen to be displayed to said user;
and

a plurality of special function
keys, each key performing a specified function, the specified function
performed by each key being determined by the particular user logged on
and the particular screen identified to be displayed.

The court easily found that Lasna’s NewLook product did not infringe.  First, NewLook did not "identify a particular user" but instead identifies computer terminals regardless of the individual using it.  The court found this PC-as-user concept very different from  "identifying a particular user."  The court also found that NewLook did not meet the claim’s third limitation because customizable function keys were not tied to particular screens–thus, even though NewLook users could program function keys, it would apply to all screens and not just at a "particular screen."

’075 Patent:  The court just as easily found that NewLook did infringe claim 1 of the ’075 patent, both directly and indirectly.  Claim 1 states: 

1. The method of communicating between a host computer and a remote terminal over a data network comprising steps of:

establishing a first communication session between said terminal and a communications server via a first communications channel;

downloading,
from said server to said terminal, communications software for
communicating between said terminal and said host and a plurality of
specific screen identifying information;

utilizing
said communications software to implement a second communications
session between said terminal and said host via a second communications
channel independent of said server;

receiving a screen from said host to said terminal;

if
said received screen matches one of the plurality of specific screen
identifying information, displaying a customized GUI screen; and

if
said received screen does not match one of the plurality of specific
screen identifying information, displaying a default GUI screen.

On Sale Bar:  Lansa argued that this claim was invalid because NewLook v. 1.0 was for sale prior to the ’075 critical date.  The issue turned on "coomunication software," which the court construed to mean the software for
the subsequent communication between the terminal and host.  However, the court found the evidence to show that v. 1.0 had "communication software" fell short of clear and convincing.  Apparently the only evidence was a help manual, marketing brochure, and "thin" testimony from several witnesses. 

Obviousness:  Lasna introduced a manual for "Flashpoint" software that disclosed all elements of claim 1.  However, the court found no evidence that the manual was in "possession of the public" more than a year before the application was filed.  Further, although the manual itself was dated early enough, it was also marked as "an unpublished work . . . considered a trade secret belonging to the copyright holder."

Permanent Injunction:  The court declined to enter a permanent injunction, finding the ResQNet failed to establish any of the four eBay factors.

Sanctions:  The court declined to award sanctions against Lasna, but did impose Rule 11 sanctions against ResQNet and its counsel.  This sanction was based on the 2001 filing of an amended complaint, alleging infringement of patents that ResQNet had already determined were not infringed.  The court, applying circuit law, settled on a $100,000 fine.

Documents: Court’s Opinion (55 pages, scanned).

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