Court Clicks Off Another Claim From Finisar’s Patent

Posted on | September 1, 2008 | No Comments

2008-1506 Comcast v. Finisar
ND/CA 06-04206
Judge William Alsup

Patentee and DJ defendant Finisar appeals from Judge William Alsup’s grant of summary judgment of invalidity to Comcast.  Specifically, the court found that claim 25 of 5,404,505 was obvious.

The Federal Circuit recently found claim 16 of the ’505 patent invalid as anticipated by a 1983 textbook written by Dr. Jan Gecsei (Finisar v. The Direct TV Group).  The PTO has also found claim 25 anticipated by the Gecsei reference in a non-final office action in connection with a reexam.

Comcast filed a declaratory judgment action after receiving a series of letters from Finistar, the last including an "ominous" statement about a multimillion-dollar verdict Finistar won in Direct TV (and which it subsequent lost).

In the end, Finistar asserted only claim 25 against Comcast–a claim which depends from claim 24 which, in turn, depends from claims 16 (and which the CAFC found anticipated by the Gecsei reference).

On summary judgment, Judge Alsup had little trouble finding claim 25 obvious in view of Gecsei and a 1982 textbook by Dr. John Tydeman entitled "Teletext and Videotext in the United States."  The Tydeman was cited in the Gecsei book.  Specifically, the court found that Gecsei contained all the limitation of claim 16 (a conclusion supplied by the CAFC in Direct TV), and Tydeman contained all the additional limitations added by claims 24 and 25.  The court rejected several of Finistar’s arguments.

First, the court rejected the argument that Tydeman’s disclosures were not enabling:

Finisar argues that Tydeman does not qualify as prior art because it is not an “enabling” reference, but rather merely eludes to what future television broadcasts may include. Finisar misses the mark. In assessing obviousness, the knowledge one skilled in the art must be evaluated at the time of the invention, not at the time of the prior art reference. See Takeda Chemical Industries, Ltd. v. Alphapharm Pty., Ltd., 492 F.3d 1350, 1362–63 (Fed. Cir. 2007). Finisar itself admits that by 1991 — the year the ’505 patent was filed — digital video transmission had become feasible due to advances in the art not attributable to the ’505. Given these advances (as specifically forecasted by Tydeman), one skilled in the art in 1991 would have been able to read Tydeman as disclosing each element of the claim 25.

The court also rejected Finistar’s argument that one of skill in the art wouldn’t look at Tydeman’s "antiquated" technology:

Finisar further states that “[b]y 1991, when digital video had become possible, one skilled in the art would not have looked back to antiquated teletext transmission schemes and to use them for digital transmission” (Opp. 14). Finisar’s argument is unconvincing for a person of ordinary skill in the art is presumed to assess obviousness with full knowledge of all the pertinent prior art. See Custom Accessories, Inc. v. Jeffrey-Allan Industries, Inc., 807 F.2d 955, 962 (Fed. Cir. 1986) (“The person of ordinary skill is a hypothetical person who is presumed to be aware of all the pertinent prior art.”). Finisar cannot evade this presumption by supposing that real-world artisans would have needed memory pills to drudge up mental images of older references. The presumption eliminates the need for memory pills. Instant, full, and accurate recall of every item of prior art must be taken for granted.

Regardless of whether Tydeman was an “antiquated” reference, it is presumed to be within the knowledge of the person of ordinary skill for obviousness purposes. In addition, Finisar’s position is directly undermined by the fact that the Federal Circuit has already found Gecsei to be an anticipatory reference for claim 16 of the same patent. Gecsei came only two years after Tydeman, was directed at the same subject matter (i.e., teletext/videotex systems), and expressly cited to Tydeman.

More reading:

Opinion on Summary Judgment

Counsel:

Comcast: Keker & Van Nest (Daralyn J. Durie, Ajay Krishnan, David Jason Silbert, John Elliot Trinidad, Kevin Thayer Reed).

Finisar: Morgan & Finnegan (George Tacticos, John Francis Sweeney, Danielle Vincenti Tully, Gerard A. Haddad, James W. Gould, Tod Mathew Melgar, Todd Lee Fettig) and Winston & Strawn (Leda M. Mouallem) and Fish & Richardson (Evelyn G. Heilbrunn).

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