May 112013

In disputes involving computer-related patents, obviously the plaintiff needs to establish that the defendant is infringing at least one of the patented claims.  But when can the plaintiff peer into the defendant’s source code during discovery for purposes of lending support to infringement.  What if the defendant moves for summary judgment even before the plaintiff determines the meaning of the claim terms?  These questions are addressed in the above Federal Circuit case decided May 7, 2013.


Baron’s patent (‘525) relates to reporting and forecasting real-time weather information. Baron sued MWI alleging infringement of the ‘525 patent.  Two months later, Baron served MWI with a request to produce MWI’s source code in their allegedly infringing technology.  MWI moved for a protective order asserting that Baron’s asserted patent claims do not recite a computer-code based invention.  Claim 1 is representative:

Baron responded by arguing that the “logic” (i.e., of claim 1) is the source code and thus MWI’s source code was relevant to show infringement since MWI implemented their technology on a computer with its source code.  The district court granted MWI’s protective order “without prejudice” so Baron could seek the information at a more appropriate time in the litigation.  Discovery continued with MWI serving Baron with discovery requests on how MWI allegedly infringed the asserted patent.  In response, Baron moved for a Markman hearing and objected to the discovery requests as premature.   Baron then served its Disclosure of Asserted Claims and Preliminary Infringement Contentions, detailing how Baron believed MWI infringed its patent. Importantly, Baron renewed its request to peer into the source code.  Then, MWI filed a motion for Summary Judgment of noninfringement, arguing that its technology merely forwards National Weather Service warnings to subscribers.  MWI’s motion for Summary Judgment included an affidavit in which the affiant explained why the accused products did not satisfy the limitations of the claim terms given her understanding of the claim terms.  In response, Baron argued that Summary Judgment was premature because the claims had not yet been construed and it had not yet had the opportunity to review MWI’s source code.  Baron then filed a motion to compel production of MWI’s source code, arguing that without the source code, “[it] and the court would simply have to rely on MWI’s word as to how its products function.”  The district court granted MWI’s motion for Summary Judgment, holding that claim construction was unnecessary because the court only had to construe “disputed” claim terms.  Was the district court’s grant of Summary Judgment proper? Should Baron have been given a chance to look at MWI’s source code?


The majority opinion held that the district court should have allowed the claims to be construed and should have allowed Baron to look at MWI’s source code.  Thus, the district court erred in granting Summary Judgment.  Baron adequately showed how the additional discovery was relevant and essential for its opposition to Summary Judgment.  Thus, the Federal Circuit held that it was improper for the district court to have refused Baron’s request to delay ruling on Summary Judgment.


The dissent disagrees that the additional discovery was necessary, looking at the plain language of claim 1.  Judge Reyna argues that since MWI’s technology disseminates unmanipulated NWS warnings to subscribers, it cannot infringe “logic configured to make a determination . . . said logic further configured to transmit, if said logic determines . . . that said one contact identifier identifies a remote unit located within said geographic region,” as recited in claim 1.  The dissent stresses that since MWI’s affidavits attest that MWI’s source code does not analyze or manipulate the weather information, that’s the end of the story.

My thoughts

This case brings up an interesting point about the difference of reciting “configured to [some function]” versus “performs [some function]” in claims.  “Configured to” can be used to denote that the claim object is capable of doing, or allowed to do, some function.  For example, a ball can be configured to bounce, to throw, to deflate – all of these things are dependent on how the object is used, not on what functions the object performs.  With regard to infringement of software, without looking at the source code, it is difficult to say that a particular software is, or is not, configured to do something.  You may be able to determine that the software does not perform a particular function, but to say that the software is not configured to perform the function is a different analysis.  In the dissent, Judge Reyna states the functions of MWI’s program (i.e., merely disseminates to users) and states that the program does not perform other functions (i.e., determine or analyze).  The dissent then concludes that as a matter of law, MWI’s program does not infringe claim 1.  But when I look at the plain language of the representative claim (Judge Reyna’s own words), the inquiry is not whether MWI’s program performs these functions.  Instead, the inquiry is whether the program is “configured to” perform the functions.  So my question is this: without looking at the source code, can you state so confidently that MWI’s program is not “configured to make a determination” or “configured to transmit, if said logic determines . . .”?


 Posted by at 9:57 pm