Geospatial Tech. Assocs. v. United States

GEOSPATIAL TECHNOLOGY ASSOCIATES, LLC, Plaintiff, v. THE UNITED STATES, Defendant.

No. 16-346

United States Court of Federal Claims

February 3, 2023

Reissued: February 21, 2023 ^[1]

Patent infringement; Obviousness; Motivation to combine Indefiniteness; Improper combination of method and apparatus claims; Means-plus-function structure

Richard T. Matthews, Raleigh, NC, for plaintiff.

Jenna Munnelly, Trial Attorney, United States Department of Justice, Washington, DC, with whom were Scott Stewart, Deputy Assistant Attorney General, Gary L. Hausken, Director, for defendant. ^[2]

OPINION

ERIC G. BRUGGINK Senior Judge

This is a patent and copyright case brought against the government for infringement of plaintiff's Patent No. 8,897,489 (the "'489 patent") and the associated software protected by copyright. Plaintiff alleges that defendant improperly possessed and used the '489 invention in violation of its patent. Defendant has responded, inter alia, by arguing that it did not infringe because the '489 patent is invalid. Pending are the parties' renewed motions for summary judgment on patent validity. As explained below, plaintiff's motion is granted in part, and defendant's is denied.

BACKGROUND

The '489 patent teaches the creation and use of a solid-object detection and identification apparatus. The technology "eliminates the need for an analyst to visually inspect all data and instead enables the analyst to quickly focus on an accurate and ranked list of target detections" within each image. '489 patent at 4. The invention functions by using a computer to accept a series of images from its user, and then uses a statistical detection algorithm to "filter each pixel in each of one or more images" to generate "a statistical detection score" for each pixel in the image. Id. The apparatus then examines the regions surrounding high-scoring pixels and uses an algorithm to unmix the pixels, collate the scores, and determine an "object based score for each [image's] identified regions." Id. at 4 (language added for clarity). Once regions with high target scores are identified, the '489 invention cross-references the scores with geographical data, further increasing the accuracy of the target detection process. The apparatus then feeds a report on the geographical location of the identified objects to the user who verifies if identified pixels and regions hold objects of interest to the analysist. Id.

Five steps fully encompass this process (as described in the patent's second figure): 1) obtaining images; 2) applying a statistical filter to generate a per pixel detection score; 3) "apply[ing] spatial process to per pixel . . . scores to identify regions" and to determine the score "in each detection plane;" 4) determining "corresponding geographical information for each identified region;" 5) and providing the selected regions and object scores "with corresponding geographical information." Id. at 3. Steps two through four can be repeated iteratively on each image to provide greater accuracy in the final report issued to the user analyst.

The '489 invention was developed between 2008 and 2011 by Dr. William Basener and was filed in a patent on January 28, 2011. Portions of the invention's software were subsequently copyrighted in July of 2017 under Registration No. TX 8-420-604. The invention's intellectual property rights were originally assigned by Dr. Basener to the Rochester Institute of Technology ("RIT"), but were later reassigned on November 12, 2015 to Geospatial Technology Associates, LLC. ("GTA", the plaintiff here.

Subsequently, the government licensed the use of the '489 invention for a short image processing contract. Under this agreement, plaintiff used the '489 invention to process and analyze images furnished by the government. Because the analysis process used an iterative procedure that used previous image results to accurately identify future images, at least one copy of plaintiff's invention remained on government computers after the end of the image processing contract. Plaintiff alleges that the government's possession of this '498 invention copy and use of other detection programs beyond the termination of the license, have infringed the '489 patent. In total, the nine programs causing alleged infringement are: Full Spectrum Tool Kit ("FSTK"), FTSK with Probabilistic Identification of Solid Materials ("PRISM"), GeoReplay, GeoReplay with Prism, GeoReplay Full Spectrum Exploitation ("GeoReplay-FX"), Lobo, HyperSEAL, GEOMATE, and Object-Based Identification, Sorting, and Ranking (OBISR) algorithms. As a result, plaintiff filed suit against the government on March 16, 2016, to seek damages for the unlicensed use of plaintiff's intellectual property.

On July 24, 2020, defendant filed a brief presenting three bases on which it believed that the '489 patent was invalid: 35 U.S.C. §102 lack of novelty, 35 U.S.C. §103 obviousness, and 35 U.S.C. §112 indefiniteness.^[3]Plaintiff responded to this brief with a motion for summary judgment asserting the '489 patent's validity; defendant replied with an opposing cross-motion regarding invalidity. Both motions were fully briefed, and on April 8, 2021, Judge Griggsby, previously assigned to this case, ruled against plaintiff and held that all claims in the '489 patent were non-novel and invalid under 35 U.S.C. §102 because they were fully anticipated by the Civil Air Patrol's Hyperspectral Sensor System ("Archer"). Geospatial Tech. Assocs. v. United States, No. 16-346C, 2021 U.S. Claims LEXIS 1085 (Fed. Cl. Apr. 8, 2021). Because this decision invalidated the entire patent, Judge Griggsby did not decide whether the '489 patent was obvious or indefinite. Plaintiff then sought reconsideration of the holding of obviousness.

The case was thereafter transferred to the undersigned. On reconsideration, plaintiff argued (amongst other unsuccessful arguments) that the court previously had erred because, "for a court to find a feature of a patent obvious or anticipated by some prior art, without that feature being explicitly taught, that feature must be 'necessarily present in the thing recognized by persons of ordinary skill.'" Geospatial Tech. Assocs., LLC v. United States, 158 Fed.Cl. 113, 119 (2021) (quoting In re Robertson. 169 F.3d 743, 745 (Fed. Cir. 1999)). Plaintiff used this precedent to argue that because the "unmixing" capabilities of the '489 patent were not found in the ARCHER prior art, the '489 patent could not have been fully anticipated by ARCHER. We agreed and, on November 29, 2021, held that "it is insufficient that the prior art might be capable of performing a function of a patented invention [unmixing] if only it were modified, tweaked, or . . . used in a machine. For a feature to be inherent in the prior art, however, that feature must be necessarily present in the steps, functions, or elements of the prior art." Id. at 6, language added for clarity.

Because the ARCHER system did not have "unmixing" as a step, function, or element, the undersigned granted the motion in part and declared that the ARCHER system did not anticipate claims 5, 14, 23, 29, 31, and 33 of the '489 patent. Id. Although this ruling had the effect of reviving the '489 patent, it did not adjudicate the obviousness and indefiniteness arguments for patent invalidity. Because those issues are unresolved and have been fully briefed, we will consider the validity issues.

Discussion

In its brief on patent invalidity, defendant argued that the '489 patent was obvious under §103 because of existing prior art that taught target detection and identification from images. Defendant also argued that the '489 patent was indefinite under §112 because the patent confused method and apparatus claims and failed to disclose the "specific structure" of the patent's algorithm. ECF No. 201 at 13, 23-25. Plaintiff opposed these arguments and sought summary judgment to declare that the '489 patent was both non-obvious and definite.

I. Obviousness

The aim of the U.S. patent system is to encourage innovation and promote the spread of new technology throughout the public by creating a disclosure that will "give the public the benefit of an invention after the patent shall expire." Beidler v. United States 253 U.S. 447, 453 (1920). In line with this goal, it is Congress's desire only to allow patents for true innovations, and not for the use of previously known elements in an obvious combination. See generally KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).

To achieve this purpose, Congress included §103 as a qualification for earning a valid U.S. Patent: "A patent for a claimed invention may not be obtained . . . if the differences between the claimed invention and the prior art are . . . obvious . . . to a person having ordinary skill in the art." This means that, when previous inventions (prior art) can be combined in obvious ways to result fully in the now-claimed invention, any patents granted for that invention are invalid and not able to serve as the basis for a patent infringement lawsuit. In this case, defendant argues that the '489 patent runs afoul of §103 because the claimed invention is:

(1) a combination of prior art elements according to known methods to yield predictable results, (2) a simple substitution of one known element for another to yield predictable results, (3) an application of known techniques to known devices ready for improvement to yield predictable results, (4) and/or obvious to try.

ECF No. 201 at 14-15.

In support of these assertions, defendant commissioned Alan Stocker, an engineering consultant, as an expert to review the '489 patent and write a report (the "Stocker Report") evaluating the '489 patent's validity. In it, Mr. Stocker...