A computer software development/software licensing expert witness advises on case involving a software designer who claims that a website service infringes on a nutritional information patent. Plaintiff filed several patent infringement actions against companies whose websites it claims used its computerized method and system for nutrition-related behavior analysis, training, and planning. The plaintiff alleges continuing damages from the alleged infringement.
The defendant asserts that the patent was not duly and legally issued and that it is invalid. It claims that the patent holder intentionally withheld from the U.S. Patent and Trademark Office at least one reference material to the patentability of the claims of the patent. Specifically, he was aware of an application for the Palm Pilot hand-held computer. He knew this product was prior art or at least intervening art to be disclosed, the defendant asserts.
Additionally, existence of a software program for children that also was prior art was intentionally withheld from the USPTO during both the original prosecution and reexamination of the patent in order to obtain claims directed at this exact subject matter, the defendant says. The original prosecution history of the patent is devoid of any office action. Had the creator made the USPTO aware of the reference, it would have likely formed the basis of a rejection. Such an office action would likely have led to at least a narrowing of claim scope, or abandonment of the application altogether, obviating the instant litigation, the defendant argues.
Question(s) For Expert Witness
- 1. Would an ordinary person understand that “computerized system” could include the Internet?
- 2. Would it be clear that the invention could be made available using the internet?
Expert Witness Response
Based upon my education, training and experience, and the facts described below, it is my opinion that a person of ordinary skill in the art would understand the term “computerized system” to mean a system that includes at least one computer and that may contain more than one computer coupled in a computer network, such as the Internet.
The invalidity contentions demonstrate that it was well-known to persons of ordinary skill in the art to use the Internet in connection with a computer system to display information of this kind to website users. It was also well-known that a computerized system or method could be used in a network environment, including the Internet. A person of ordinary skill in the art at this time also would understand how to implement a computer system or method using a network to display information such as the information to be displayed by the invention of the patent.
A person of ordinary skill in the art described above would understand the statement in the patent that prior applications are “incorporated by reference,” together with the surrounding language, incorporating the entirety of each of these applications into the disclosure in the specification of the patent. The patent states that the applications are “incorporated by reference” without qualification.
Apart from whether the entirety of these patent applications was incorporated by reference into the patent, a person of ordinary skill in the art described above at the time of the invention of the patent would understand that the disclosure in each of these patent applications discloses that the computer-implemented invention claimed in the patent and the reexamination certificate could be made available using a network of computers, including the Internet.