E-Data owned a patent which concerned a system for reproducing information in “material objects at a point-of-sale location”. The method and apparatus claimed enabled articles (such as CDs) embodying information (such as sound recordings) to be manufactured on demand at the place where they are sold under the control of the “owner” of the information – i.e. the copyright holder or his licensee.
E-Data tried to use its patent to take action against Getty Images. Getty Images supplied digital copies of images from libraries accessible over the Internet via their websites. Customers who wished to reproduce these images entered into a licence agreement whereupon they could download digital copies of the images on to their computers and thereafter reproduce them as required. In response, Getty Images claimed that E-Data’s patent was invalid because it lacked novelty.
As is so often the case with patent infringement claims, the court’s construction of the various claims for the patent was central to the case. E-Data claimed that the invention embraced a system in which additional copies of legally downloaded information could be made. The Defendants, on the other hand, said that such a system was outside the scope of the invention and that the invention could not be used to make further copies, unless a further request was made from the owner of the information. The Defendant’s interpretation was preferred, not least since it provided “a coherent explanation for the function and inter-relationship of the various features of the claims”.
Further significant issues concerned the construction of the named term “point of sale location”. The defendant submitted that it could only be a location where “material objects” embodying information were sold and purchased. The patentee contended that a “point of sale location” could be any location where a consumer can purchase a material object or where there are means to make such a material object himself – for example using a CD re-write function on a home computer. Once again, the defendant’s construction was preferred. It was held that, if this was what the inventor intended, it would have been easy for him to draft the patent that way and unnecessary for him to include a definition of “point of sale location”.
For the above reasons, the patent was found to be not infringed. Further, in light of the construction given, the patent was in any event found to be invalid as lacking novelty and obvious over cited prior art.
The case will be of interest to both patent lawyers and the IT community. It represents a further example of a case where a patent directed to the sale of physical products was unable to be enforced in respect of activities carried out over the Internet.
This article first appeared in our Technology Annual Review, March 2006. To view this publication, please click here to open in a new window.