Data transmission patent claimed against Amazon and Blizzard partially invalidated

Via Vadis, LLC and. al v Blizzard Entertainment, Inc.

Case n ° 19-2269

AND

Via Vadis, LLC and. al v Amazon.com, Inc.

Case n ° 19-2270

United States Court of Appeals for the Federal Circuit

Decided on July 8, 2020

In an unprecedented opinion. the federal circuit partially upheld and partially reversed the district court’s conclusion on the indefinite nature of the claims in US Patent No.RE40,521 (“The 521 Patent”) describing a system and method of data access and management that the Via Vadis, LLC patent holder and the AC Technologies SA patent holder (collectively “Via Vadis”) have asserted that the service Blizzard Entertainment, Inc. Online Gaming Services The cloud services of Battle.net and Amazon.com, Inc. have been breached.

In separate 2014 District Court cases, Via Vadis asserted that Amazon Elastic Compute Cloud’s alleged use of peer-to-peer file sharing BitTorrent and Blizzard’s Battle.net gaming platform for games such as World of warcraft and StarCraft violated the ‘521 patent. The lawsuits also alleged infringement of US Patents Nos. 7,904,680 and 8 656 125, but both were struck down by the US Patent Trial and Appeal Board, so only the ‘521 patent was in issue in the Federal Circuit.

The district court challenged the claim term “predefined parameters” and “could not discern in advance from which event or action the parameters should be specified”. Rather, the Federal Circuit considered that the expression “predefined parameters” was “reasonably verifiable in the context of [the ’521 Patent] and refers to parameters specified before data transmission. The Court cited Phillips v. AWH Corp. for the principle that a person skilled in the art reads a claim term in the context of the entire patent and specification. The specification of the ‘521 patent states that the invention optimizes “the speed and reliability of data transmission” by “(1) redundantly storing data in different data storage locations, then (2) using parameters associated with each location. . . to assess which location will provide the desired data most quickly and reliably. . . “According to the Court, a person skilled in the art reading the specification of the ‘521 patent would understand that the’ parameters’ select the source of the data transmission, so they must be specified in advance for this to occur.

Blizzard argued that “prespecified” is “unclear because the patent does not require a specific point in time when parameters are specified,” but the Court found this unconvincing because the exact time was not does not matter as long as the parameters are specified before data transmission. Via Vadis successfully argued that “prespecified” has a simple and ordinary meaning to be specified in advance, citing IGT v Bally Gaming Int’l, Inc. who concluded that “predetermined event” has a simple and ordinary meaning to be defined in advance.

Although the Federal Circuit found that the term “predefined parameters” was not undefined, it found that the system claimed to be “invalid because undefined because the specification failed to identify the corresponding structure for the second means limitation. “. The Court cited Diebold Nixdorf, Inc. v. Int’l Trade Comm’n for the principle that “[w]When the specification fails to identify a structure sufficient to perform the claimed function, the limitation of the means plus the function has no discernible scope, and the claim is invalid for indefinite. The Court found that the first means, which is a network of computers, cannot also perform the second means, which is data storage. The Court also stated that the two means do not share the same algorithm and based this conclusion on the limitations of the two means having different recited functions. The Federal Circuit conceded that a structure can serve more than one function, but found that neither the specification nor the claims of the ‘521 patent detail how the hardware or algorithm can be associated with the limitations of both means.

The tribunal concluded that claims 30-31, 33 and 40-46 were final because the “predefined parameters” were reasonably verifiable by a person skilled in the art, and found claims 1, 4, 11-18 and 20-22 undefined because there is no corresponding structure for the second limitation of means. Reversing the district court’s findings that the 30 et al claims were likely undefined means that those claims are going back to court.

35 USC § 112 requires that the claims be defined with sufficient clarity and specificity, but, as demonstrated in this case, courts will look to the specification to inform the meaning of the language of the claims. The language of means and functions continues to present risks in patent claims, and an ever-changing standard of disclosure required for the corresponding structure impacts the value of those claims.