Patent Expert Advises on Patent Infringement Involving Video Technology

A patent expert advises on a case involving a video technology creator who is suing for patent infringement. The plaintiff’s video technology received patent approval in 1998. Defendants have and continue to infringe, contribute to infringement, and/or induce infringement of the patent by making, using, selling, offering to sell and/or importing, and/or causing others to make, use, sell, or offer to sell, and/or import systems and/or devices that are covered by one or more of the claims of the patent, the plaintiff alleges. The defendant’s acts of infringement have caused damage to the plaintiff, who is entitled to recover damages from the defendant, the plaintiff alleges.

The plaintiff filed a claim for patent infringement, hired a patent expert and sought to enjoin the defendant from committing further acts of infringement.

Question(s) For Expert Witness

1. Does the defendant’s video technology infringe on plaintiff’s patented technology?

2. Why or why not?

Expert Witness Response

In my opinion, the defendant’s product does not infringe the asserted claims of the patent and they are invalid as obvious in light of the prior art discussed herein and are invalid as non-enabled. I have found invalidity of all the claims asserted based on several grounds including an error or oversight by the USPTO during the reexamination.

As to non-infringement, all of the asserted claims specify “storing image data” and “comparing image data”. The computer code used by defendant’s system, which may be entered from a computer keyboard, is not “image data”. It is not data related to an image. It is computer code that is not related to any image. The reference code list is not made from pictures. There are never “reference image data” as specified in the plaintiff’s claims.

The validity of the asserted patent claims is affected by the history of the reexamination of the plaintiff’s patent. In reexamination the original claims 1 and 2, among others, were held unpatentable.

In addition, the plaintiff’s patent is invalid as it is non-enabling. A critical component, upon which the patent was primarily granted, is not commercially available, as far as I can tell. A person skilled in the pertinent art, using the knowledge available to such a person and the disclosure in the patent, could not make and use the invention without undue experimentation.

This patent expert has four patents in the video field, has prosecuted patents in this field and been involved in patent infringement of one of his patents in this field.