Walmart’s Online Shopping Platform Survives Patent Challenge on Appeal
By Tony Dutra
An alleged patent infringer is not estopped from changing an argument that failed to persuade the Patent and Trademark Office during patent reexamination, the U.S. Court of Appeals for the Federal Circuit ruled April 16 in a ruling designated as nonprecedential (Speedtrack Inc. v. Endeca Technologies Inc., Fed. Cir., No. 2012-1319, 4/16/13, unpub).
The court affirmed a lower court’s validity and noninfringement judgments.
Finding Products Online by Category Selection
Speedtrack Inc. holds a patent (U.S. Patent No. 5,544,360), first applied for in 1992, related to linking data storage to assigned categories.
Endeca Technologies Inc. licenses an “Information Access Platform” that allows users to search for products online. Walmart.com USA L.L.C. uses Endeca’s platform.
Speedtrack sued Walmart, alleging patent infringement, and Endeca intervened.
Judge Phyllis J. Hamilton of the U.S. District Court for the Northern District of California granted Endeca’s motion for summary judgment of noninfringement and Speedtrack’s motion for summary judgment of no invalidity. Both sides appealed the adverse decisions.
‘Description’ Equals Alphabetic
The parties disputed whether the patent claim term “category description” encompassed a name composed solely of nonalphabetic characters, such as the numeric listings in Endeca’s platform.
Judge Evan J. Wallach noted that the claims asserted differentiate “category description” and “category description identifier,” the latter “preferably a number” according to the specification.
Speedtrack pointed to a figure in the specification that listed numerical values under the title “Category_Array,” but the column was defined as an “array of identifiers of the associated categories,” the court said, adding its own emphasis.
Consequently, since Endeca’s categories were identified only by numerics, the court affirmed the district court’s summary judgment of noninfringement.
Different Contentions at PTO
Speedtrack further argued that, in the Endeca-initiated reexamination of the ’360 patent at the PTO, the challenger asserted that a prior patent (U.S. Patent No. 5,062,074) satisfied the “category description” limitation though it used numeric identifiers. However, Endeca countered, the PTO used a broader construction of the term in reexamination, and the company’s validity challenge there was therefore not inconsistent with its arguments in the district court litigation.
Ultimately, the PTO confirmed the patentability of the ’360 patent without any narrowing amendments, the court noted, and it accordingly did not adopt Endeca’s contentions. The court rejected as speculative Speedtrack’s assertions that litigation would have been on different terms–it was stayed during reexamination–had the patent owner known Endeca would change its arguments.
The court thus rejected Speedtrack’s request to apply judicial estoppel to Endeca’s current arguments.
The court next affirmed the district court’s decision denying Speedtrack’s motion to amend to include a charge of infringement under the doctrine of equivalents. Particularly damaging was Speedtrack’s six-month delay, after an Endeca interrogatory confirmed its current argument, before filing the motion.
Finally, Endeca’s appeal was contingent on a loss of its victory on noninfringement, so the court declined to address the lower court’s patent validity finding.
Judges Timothy B. Dyk and Kimberly A. Moore joined the opinion.
Roderick G. Dorman of McKool Smith Hennigan, Los Angeles, represented Speedtrack. Steven M. Bauer of Proskauer Rose, Boston, represented Endeca.
By Tony Dutra