DCT
1:05-cv-03317
Datascape Inc v. Sony Ericsson Mobile Communications Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Datascape, Inc. (Georgia)
- Defendant: Sony Ericsson Mobile Communications Inc. (Delaware)
- Plaintiff’s Counsel: Robins, Kaplan, Miller & Ciresi L.L.P.
- Case Identification: 1:05-cv-03317, N.D. Ga., 12/29/2005
- Venue Allegations: Venue is alleged as proper pursuant to 28 U.S.C. §§ 1391(b) and (c), without further factual specification.
- Core Dispute: Plaintiff alleges that Defendant’s Internet-enabled wireless handsets infringe six U.S. patents related to extending open network communication protocols to support non-standard input/output devices for electronic transactions.
- Technical Context: The technology addresses enabling devices not designed as standard personal computers, such as point-of-sale terminals or smart card readers, to communicate and transact over open networks like the Internet.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant with notice of U.S. Patent Nos. 5,742,845 and 5,905,908 no later than July 19, 2001, an allegation that may form the basis for a claim of pre-suit willful infringement. The complaint also states that the patents-in-suit have been licensed to numerous third parties, including Nokia, Samsung, and Motorola.
Case Timeline
| Date | Event |
|---|---|
| 1995-06-22 | Earliest Priority Date for all Patents-in-Suit |
| 1998-04-21 | U.S. Patent No. 5,742,845 Issues |
| 1999-05-18 | U.S. Patent No. 5,905,908 Issues |
| 2001-07-19 | Alleged Notice of Infringement of the ’845 and ’908 Patents |
| 2002-04-02 | U.S. Patent No. 6,366,967 Issues |
| 2004-01-27 | U.S. Patent No. 6,684,269 Issues |
| 2004-06-01 | U.S. Patent No. 6,745,259 Issues |
| 2005-06-14 | U.S. Patent No. 6,907,476 Issues |
| 2005-12-29 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 5,742,845 - System for Extending Present Open Network Communication Protocols to Communicate with Non-Standard I/O Devices Directly Coupled to an Open Network
- Patent Identification: U.S. Patent No. 5,742,845, “System for Extending Present Open Network Communication Protocols to Communicate with Non-Standard I/O Devices Directly Coupled to an Open Network,” issued April 21, 1998.
- The Invention Explained:
- Problem Addressed: The patent’s background section describes the problem that open network communication protocols, such as those used on the Internet, were designed for standard personal computers (PCs) and lacked the ability to communicate with "non-standard" input/output (I/O) devices like credit card readers, PIN pads, or smart card readers, limiting their utility for secure financial transactions ('845 Patent, col. 4:3-12).
- The Patented Solution: The invention proposes extending an open network protocol, such as HTTP, with new commands and attributes within a markup language like HTML. These extensions are designed to identify and control non-standard I/O devices for data input and output. A Common Gateway Interface (CGI) at the server then translates these extended protocol statements into a format, such as SQL, that a back-end application program can understand, thereby bridging the communication gap between the specialized hardware and the server application ('845 Patent, Abstract; col. 6:1-19). Figure 1 illustrates this architecture, showing various non-standard devices (16, 18, 20, 32, 34, 36, 38) communicating with a Web Server (12) and a back-end processing system (40) via the CGI (28) ('845 Patent, Fig. 1).
- Technical Importance: This system allowed for the integration of secure, special-purpose transaction hardware into the ubiquitous and low-cost infrastructure of the Internet, which was previously impractical due to protocol incompatibilities ('845 Patent, col. 6:20-29).
- Key Claims at a Glance:
- The complaint does not assert specific claims, instead alleging infringement of "one or more claims" of the patent (Compl. ¶10). Independent claim 1 is representative of the system described.
- Claim 1 of the ’845 Patent requires:
- A server for communicating in an extended open network protocol.
- A plurality of I/O devices coupled to the server through an open network, communicating in the extended protocol that supports communication with non-standard I/O devices.
- The extended protocol includes tags for identifying an I/O device and an input operation, action attributes for defining the device operation with a local resource, and method attributes for defining a data transfer method between the server and I/O devices.
U.S. Patent No. 5,905,908 - Open Network System for I/O Operations with Non-Standard I/O Devices Utilizing Extended Protocol Including Device Identifier and Identifier for Operation to be Performed with Device
- Patent Identification: U.S. Patent No. 5,905,908, “Open Network System for I/O Operations with Non-Standard I/O Devices Utilizing Extended Protocol Including Device Identifier and Identifier for Operation to be Performed with Device,” issued May 18, 1999.
- The Invention Explained:
- Problem Addressed: As a continuation of the '845 Patent, the '908 Patent addresses the same technical challenge: the inability of standard open network protocols to communicate with non-standard I/O devices essential for electronic transactions, particularly in the context of home banking and point-of-sale systems ('908 Patent, col. 2:56-62).
- The Patented Solution: The invention describes a client-server system where an extended open network protocol includes specific identifiers for both the non-standard I/O device itself and for the particular operation to be performed with that device. A client program on the I/O device communicates with a server program using this extended protocol, allowing for precise control over remote, specialized hardware. ('908 Patent, Abstract; col. 5:28-44).
- Technical Importance: The solution enables specific transactional functions on remote, non-PC hardware to be invoked and managed over a general-purpose open network, facilitating secure and reliable electronic commerce.
- Key Claims at a Glance:
- The complaint does not assert specific claims (Compl. ¶10). Independent claim 1 is representative of the system described.
- Claim 1 of the ’908 Patent requires:
- A server program coupled to an open network.
- A non-standard I/O device coupled to the open network.
- A client program for communicating data in an extended open network protocol between the server and the non-standard device.
- The extended protocol includes an identifier for the non-standard I/O device for a transaction and an identifier for an operation to be performed with that device.
U.S. Patent No. 6,366,967 - Open Network System for I/O Operation Including a Common Gateway Interface...
- Patent Identification: U.S. Patent No. 6,366,967, "Open Network System for I/O Operation Including a Common Gateway Interface...," issued April 2, 2002.
- Technology Synopsis: This patent, part of the same family, focuses on the role of the Common Gateway Interface (CGI) in the transaction system. It describes how the CGI translates between the extended open network protocol used by non-standard I/O devices and the application language statements (e.g., SQL) used by a back-end database or processing application (’967 Patent, Abstract).
- Asserted Claims: The complaint does not assert specific claims (Compl. ¶10).
- Accused Features: Defendant's "Internet-enabled wireless handsets" are accused of infringement (Compl. ¶11).
U.S. Patent No. 6,684,269 - System and Method for Enabling Transactions Between a Web Server and a Smart Card, Telephone, or Personal Digital Assistant Over the Internet
- Patent Identification: U.S. Patent No. 6,684,269, "System and Method for Enabling Transactions Between a Web Server and a Smart Card, Telephone, or Personal Digital Assistant Over the Internet," issued January 27, 2004.
- Technology Synopsis: This patent focuses on applying the core invention to specific types of non-standard I/O devices, namely smart cards, telephones, and personal digital assistants (PDAs). It claims methods and systems for enabling transactions between a web server and these specific device types over the Internet (’269 Patent, Abstract).
- Asserted Claims: The complaint does not assert specific claims (Compl. ¶10).
- Accused Features: Defendant's "Internet-enabled wireless handsets" are accused of infringement (Compl. ¶11).
U.S. Patent No. 6,745,259 - Open Network System for I/O Operation Including a Common Gateway Interface...
- Patent Identification: U.S. Patent No. 6,745,259, "Open Network System for I/O Operation Including a Common Gateway Interface...," issued June 1, 2004.
- Technology Synopsis: Continuing the same technology tree, this patent further elaborates on the system architecture involving a CGI. The claims are directed toward the system and method where the CGI translates protocol statements from the client device into database-compatible commands for a back-end application (’259 Patent, Abstract).
- Asserted Claims: The complaint does not assert specific claims (Compl. ¶10).
- Accused Features: Defendant's "Internet-enabled wireless handsets" are accused of infringement (Compl. ¶11).
U.S. Patent No. 6,907,476 - Open Network System and Method for I/O Operations with Non-Standard I/O Devices...
- Patent Identification: U.S. Patent No. 6,907,476, "Open Network System and Method for I/O Operations with Non-Standard I/O Devices...," issued June 14, 2005.
- Technology Synopsis: This patent also describes the core client-server system using an extended open network protocol. Its claims focus on the combination of a server, a non-standard I/O device, and a client program that processes the extended protocol statements containing identifiers for the device and the operation to be performed (’476 Patent, Abstract).
- Asserted Claims: The complaint does not assert specific claims (Compl. ¶10).
- Accused Features: Defendant's "Internet-enabled wireless handsets" are accused of infringement (Compl. ¶11).
III. The Accused Instrumentality
- Product Identification: The accused instrumentalities are Defendant's "Internet-enabled wireless handsets" (Compl. ¶10). The complaint lists numerous specific models, including W800, W600, Z520a, J230a, and others (Compl. ¶11).
- Functionality and Market Context: The complaint describes the accused products only as "Internet-enabled wireless handsets" (Compl. ¶10). It does not provide any specific details regarding their technical operation, architecture, software, or the protocols they use to communicate over the Internet. The complaint alleges that Defendant makes, offers for sale, sells, and/or imports these products in the United States (Compl. ¶10). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint does not contain a claim chart or provide a narrative theory mapping specific product features to claim elements. The following summary is based on the representative independent claims identified in Section II and the general allegations in the complaint.
’845 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a server for communicating in an extended open network protocol | The complaint alleges Defendant’s handsets operate within a system that infringes, but provides no specific allegations regarding the server or its protocol. | ¶10, ¶11 | col. 10:11-25 |
| a plurality of input/output (I/O) devices coupled to said server...that supports communication with non-standard I/O devices | The complaint alleges Defendant's "Internet-enabled wireless handsets" are the infringing devices but provides no details on how they meet the definition of "non-standard I/O devices." | ¶10, ¶11 | col. 4:3-12 |
| wherein said extended open network protocol further comprising: tags for identifying one of said I/O devices...action attributes...method attributes | The complaint makes a general allegation of infringement but does not identify any specific "tags," "action attributes," or "method attributes" used by the accused products. | ¶10, ¶11 | col. 11:30-54 |
’908 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a server program coupled to an open network | The complaint alleges infringement by a system including the handsets but does not describe the accused server program. | ¶10, ¶11 | col. 10:11-25 |
| a non-standard input/output (I/O) device coupled to said open network | The complaint identifies Defendant's "Internet-enabled wireless handsets" as the accused devices, without specifying how they qualify as "non-standard." | ¶10, ¶11 | col. 4:8-19 |
| a client program for communicating data in an extended open network protocol...including one identifier for said non-standard I/O device...and an identifier for an operation | The complaint does not identify the accused client program or allege that it uses an extended protocol with the specific device and operation identifiers required by the claim. | ¶10, ¶11 | col. 5:28-44 |
- Identified Points of Contention:
- Scope Questions: A principal issue may be whether the accused "Internet-enabled wireless handsets," which are general-purpose computing devices, fall within the scope of the claimed "non-standard I/O devices." The patents-in-suit primarily provide examples of special-purpose transaction hardware like credit card terminals and PIN pads ('845 Patent, Abstract).
- Technical Questions: The complaint does not provide any factual basis for its allegation that the accused products use an "extended open network protocol." A central question for the court will be what evidence demonstrates that the accused systems use protocols with the specific tags, attributes, and identifiers required by the claims, rather than standard, un-extended protocols.
V. Key Claim Terms for Construction
The complaint does not provide sufficient detail for a definitive analysis, but based on the technology and the accused products, the following terms may be central to the dispute.
The Term: "non-standard I/O devices"
Context and Importance: The applicability of the patents-in-suit to the accused wireless handsets hinges on the construction of this term. Practitioners may focus on this term because the patents' examples are primarily single-purpose transaction terminals, whereas the accused products are multi-function, general-purpose computing devices.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification defines these devices as those "which have limited input and output capabilities such as small screen displays or ten keypads" ('845 Patent, col. 4:7-9). This language could be argued to encompass certain characteristics of wireless handsets from the relevant time period.
- Evidence for a Narrower Interpretation: The abstract and detailed description consistently provide specific examples limited to point-of-sale hardware: "magnetic stripe readers, check readers, smart card readers, credit card terminals, screen phone terminals, PIN pads, printers, and the like" ('845 Patent, Abstract). This may support an interpretation that limits the term to such special-purpose transaction devices.
The Term: "extended open network protocol"
Context and Importance: Infringement requires not just the use of an open protocol, but one that is "extended" as taught in the patents. The dispute will likely focus on whether the protocols used by the accused system contain the specific novel extensions claimed.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Plaintiff may argue that any protocol that communicates device-specific commands beyond standard HTTP functions qualifies as "extended" under the patent's general description.
- Evidence for a Narrower Interpretation: The specification provides very specific examples of extensions, such as new "TYPE" attributes within an HTML "" tag (e.g., "MSRT1" for a magnetic stripe reader) and new "ACTION" attributes (e.g., "TO PRINTER") ('845 Patent, Fig. 2; col. 11:30-54). This may support a narrower construction requiring the presence of these specific types of protocol extensions.
VI. Other Allegations
- Indirect Infringement: The complaint makes a conclusory allegation of "contributory infringement, and/or inducement to infringe" but alleges no specific facts to support the knowledge and intent elements of such claims, such as instructions or user manuals provided by Defendant (Compl. ¶14).
- Willful Infringement: The complaint alleges that Defendant's infringement "has been, and continues to be, willful" (Compl. ¶15). This allegation appears to be based on alleged pre-suit notice of the ’845 and ’908 Patents provided "no later than July 19, 2001" (Compl. ¶12). For the four patents that issued after that date, any willfulness claim would presumably be based on knowledge obtained from the filing of the complaint itself.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "non-standard I/O device," rooted in the patents’ context of special-purpose point-of-sale hardware, be construed to cover the accused general-purpose "Internet-enabled wireless handsets"?
- A key evidentiary question will be one of technical implementation: what evidence, if any, will be presented to show that the accused products’ communication systems utilize an "extended open network protocol" containing the specific device-identifying tags and operational identifiers required by the claims, as opposed to standard, un-extended Internet protocols?
- A threshold procedural question concerns the sufficiency of the pleadings: given the complaint’s lack of specific asserted claims or any factual allegations mapping claim elements to accused functionalities, the court may need to address whether it provides legally sufficient notice of the basis for the infringement claims.