Resqnet.Com, Inc. v. Lansa, Inc.

533 F.Supp.2d 397

RESQNET.COM, INC., Plaintiff, v. LANSA, INC., Defendant.

No. 01 Civ. 3578(RWS).

United States District Court, S.D. New York.

February 1, 2008.

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Kaplan Gilman Gibson & Dernier LLP, by: Jeffrey I. Kaplan, Esq., Woodbridge, NJ, for Plaintiff.

Arent Fox LLP, by: James H. Hulme, Esq., Janine A. Carlan, Esq., Washington, D.C., Arent Fox LLP, by Steven Kimelman, Esq., David N. Wynn, Esq., New York, NY, for Defendant.

OPINION

SWEET, District Judge.

Upon all the proceedings had heretofore and upon the following findings of fact and conclusions of law, judgment will be entered in favor of defendant Lansa, Inc. ("Lansa" or the "Defendant") as to U.S. Patent No. 5,831,608 (the "'608 Patent") and in favor of plaintiff ResQNet.com, Inc. ("ResQNet" or the "Plaintiff") as to U.S. Patent No. 6,295,075 (the "'075 Patent").

Prior Proceedings

By a complaint filed on April 27, 2001 and an amended complaint filed on December 4, 2001, ResQNet alleged that Lansa's product "NewLook" infringed one or more claims of five U.S. patents, the '608 Patent, the '075 Patent, and U.S Patent Nos. 5,530,961 (the "'961 Patent"), 5,792,659 (the "'659 Patent"), and 5,812,127 (the "'127 Patent"). ResQNet subsequently withdrew its allegations of infringement concerning the '659 Patent and the '127 Patent.

After holding a hearing pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996), the Court interpreted the language of the '608 Patent, the '075 Patent, and the '961 Patent in an Opinion dated September 5, 2002. See ResQNet.com, Inc. v. Lansa, Inc., No. 01 Civ. 3578(RWS), 2002 WL 31002811, 2002 U.S. Dist. LEXIS 16667 (S.D.N.Y. Sept. 5, 2002) ("ResQNet I").

Based upon the Court's claims construction in ResQNet I, the parties stipulated to final judgment in Lansa's favor with respect to all three patents then in the suit. ResQNet's claims were dismissed with prejudice, with ResQNet's consent, by final judgment entered by this Court on November 4, 2002.

On appeal, the Federal Circuit affirmed in part and reversed in part the claim construction ruling in ResQNet I, and remanded for further proceedings. See ResQNet.com, Inc. v. Lansa, Inc., 346 F.3d 1374 (Fed.Cir.2003) ("ResQNet II"). Based upon the stipulated final judgment entered in November 2002, and the Federal Circuit's affirmance of this Court's claim Construction ruling on the '961 patent, only the '075 and '608 patents remained on remand in October 2003.

By an Opinion dated January 13, 2005, the Court denied the parties' motions for partial summary judgment, Plaintiffs motion to strike Defendant's invalidity defense as to the '075 Patent, and Plaintiff's motion for sanctions, granted Plaintiff's motion for leave to file a sur-reply and Defendant's motion for leave to amend its answer and counterclaims, and granted in part Defendant's motion for sanctions. See ResQNET.com, Inc. v. Lansa, Inc., 382 F.Supp.2d 424 (S.D.N.Y.2005) ("ResQNet III").

The parties then moved for partial summary judgment on the issue of ResQNet's alleged inequitable conduct in the prosecution of the '075 Patent. By an Opinion dated November 22, 2006, the Court granted summary judgment in favor of ResQNet on this issue. See ResQNet.com, Inc. v. Lansa, Inc., No. 01 Civ. 3578(RWS), 2006 WL 3408435, 2006 U.S. Dist. LEXIS 85613 (S.D.N.Y. Nov. 22, 2006) ("ResQNet IV").

A bench trial was held from May 21, 2007 to May 24, 2007 and post-trial memoranda were submitted up to and including August 29, 2007.

Lansa filed a motion to strike Plaintiff's exhibit 5A on October 26, 2007, which the Court denied on December 3, 2007.

The only remaining patent claims at issue are claim 1 of the '608 Patent and claim 1 of the '075 Patent. (Joint Pretrial Submission "Stipulations of Law and Fact Agreed to by All Parties" ¶ 2).

Findings of Fact

A. Background

In ResQNet II, the Federal Circuit summarized the subject matter of the patent claims at issue in this action:

The three patents-in-suit claim, in relevant part, "screen recognition" and terminal emulation — processes that download a screen of information from a remote mainframe computer onto a local personal computer (PC). Mainframe computers permit multiple users to simultaneously access, one central computer. Before the widespread use of PCs, each user would connect to the mainframe using a so-called "dumb terminal." A dumb terminal typically included a monitor for displaying text and a keyboard for data entry. A dumb terminal, as its name implies, did not process or reformat the data received from the mainframe. Rather, the dumb terminal simply displayed the information from the mainframe. Symmetrically, the dumb terminal sent all data entry back to the mainframe for processing. Because a dumb terminal's monitor generally was a monochromatic green, the display was called a "green screen."

Gradually, PCs replaced dumb terminals. Unlike a dumb terminal, a PC does not merely, send and receive information. Rather, a PC uses software to facilitate communication to and from the mainframe. With that software, a PC does not simply, mimic a dumb terminal, but processes the information into a graphical user interface (GUI) format, which is much more user-friendly. Although the GUI format displays and receives information to and from the user, the PC still sends and receives information only in the manner understood by the mainframe, i.e., as if a dumb terminal were connected to, the mainframe. In relevant part, the asserted patents specifically facilitate recognition of the information that the mainframe sends to the PC.

ResQNet II, 346 F.3d at 1375-1376.

B. The '608 Patent

The '608 Patent is entitled "User Interface for a Remote Terminal" and was filed on March 30, 1996. (Defendant's Trial Exhibit ("DTX") 7).

The '608 Patent is a continuation-in-part of the '961 Patent. (Joint Pretrial Submission "Stipulations of Law and Fact Agreed to by. All Parties" ¶ 5).

Claim 1 of the '608 Patent is a "means plus function claim" with two of its limitations in means-plus-function format:

Apparatus for implementing a computer terminal to be connected to a remote computer, said apparatus comprising:

means for identifying a particular user logged on to said remote computer through said computer terminal;

means for identifying, based upon a position, length and type of each of a plurality of fields, a particular screen to be displayed to said user; and a plurality of special function keys, each key performing a specified function, the specified function performed for each key being determined by the particular user logged on and the particular screen identified to be displayed.

('608 Patent, col. 4); see also ResQNet III, 382 F.Supp.2d at 429.

The first element in claim 1 of the '608 Patent, "means for identifying a particular user logged on to said remote computer through said, computer terminal," identifies the user who is using the particular screen by identifying the login screen as such and then identifying the field where the login is entered. (DTX 106; Yampel Dep. 46-47). "The claimed function is identifying a particular user logged on." ('608 Patent, col. 4). This element describes an algorithm and also refers to the services delivered to different users. (DTX 106; Yampel Dep. 48) ("[O]nce we know who the, user is we might produce a different customized screen or the same screen.").

The second element in claim 1 of the '608 Patent has a function of "identifying ... a particular screen to be displayed to said user" and the corresponding structure is an algorithm for analyzing the downloaded information to generate a screen ID. ResQNet III, 382 F.Supp.2d at 430; ('608 Patent, col. 4; Joint Pretrial Submission "Stipulations of Law and Fact Agreed to by All Parties" ¶ 6).

A "screen ID," as used in this Court's prior interpretation of the '961 Patent, "refers to a number." ResQNet I, 2002 WL 31002811, *9, 2002 U.S. Dist. LEXIS 16667, at *28.

The algorithm, of claim 1 of the '608 Patent "is dependent on three parameters for identifying a screen: position, length, and type." ResQNet I, 2002 WL 31002811, *7, 2002 U.S. Dist. LEXIS 16667, at *20; (Joint Pretrial Submission "Stipulations of Law and Fact Agreed to by All Parties" ¶ 8).

The third element of claim 1 of the '608 patent describes customization of special function keys based upon the user who is logged on. ('608 Patent, Col. 4; PTX 22, July 20, 2004 Report SI 32, Trial Tr. 505). Special function keys are those keys that the legacy applications (i.e., those applications that generate, the green screens) employed, having names like system requests, function key 1, attention keys, clear keys. The special, function keys are reflected, on a keyboard, and can be something like the PF1 key. (DTX 106; Yampel Dep. 50).

C. The '075 Patent

The '075 Patent is titled "Configurable terminal capable of communicating with various remote computers" and was filed on July 10, 1997. (DTX 9).

Claim 1 of the '075 Patent is a pure method claim as follows:

The method of communicating between a host computer and a remote terminal over a data network comprising steps of: establishing a first communication session between said terminal and a communications server via a first communications channel;

downloading, from said server to said terminal, communications software for communicating between said terminal and said host and a plurality of specific screen identifying information;

utilizing said communications software to implement a second communications session between said terminal and said host via a second communications channel independent of said server;

receiving a screen from said host to said terminal;

if said received screen matches one of the plurality of specific screen identifying information, displaying a customized GUI ...