Sometimes I wonder what it might have been like to be on a patent jury in 1840. The claim at issue is 12 words, something like "a machine for curing drunkenness through violent shaking, operated by a crank."
(Eds. note - is that a haiku?)
A be-wigged and mustachioed defense lawyer argues that it was really more of a swivel than a crank, and anyways it was well known in the prior art that drunkenness could be cured by shaking the inebriated patient manually, and thus no patent should have issued.
The jury nods in agreement at these self-evident truths, and then goes on to deliver a verdict after a brief luncheon of organ meat pies. Justice, like lunch, is served.
Those halcyon days are, of course, long gone as evidenced by Judge Andrews' opinion in Shopify Inc. v. Express Mobile, Inc., C.A. No. 19-439-RGA (D. Del. May 17, 2024) (Mem. Op.), which dealt with a claim (one of many) that was 424 words long.
The opinion on the various post-trial motion goes into great detail about the difficulties of presenting a coherent trial on such complicated software claims:
Much of the trial testimony on infringement can only be understood, if at all, with great effort. The claims are very long and complicated. For example, claim 1 of the '287 patent is 424 words long. At trial, Express Mobile divided the claims into four parts, which it color-coded as red, green, gold, and blue. The testimony of Plaintiffs technical expert about how Shopify's system worked was intermingled with references to its meeting, e.g., the "red group of limitations." The testimony at times lacked the usual one-to-one correspondence with the specific limitations in the claims, and that combined with the color-coding means that trying to figure out whether there was sufficient evidence to show infringement is difficult.
Id. at 9 (internal citations omitted).
Given that description, I was surprised to see that the patentee had actually prevailed at trial to the tune of $40,000,000. Judge Andrews apparently agreed because he granted a motion for a new trial noting the lack of clarity in the presentation:
However, the evidence the jury heard on the identification of the Player and Application was unclear and confusing. It would be a miscarriage of justice to allow the verdict of infringement to stand when the testimony about what was the Player and what was the Application was so unclear.
Id. at 10 (internal citations omitted)
It would be nearly impossible for the jury to figure out whether the Player and Application were supposed to be lines of code from certain files, or the files themselves. Dr. Almeroth referred to the Player as code, but then mentioned he went through the whole file to determine the code was device-dependent. The implication seems to be that the Player is a file, contradicting Express Mobile's assertion that the Player is certain lines of code
Id. at 11.
This type of unclear, contradictory testimony makes it impossible to have any confidence in the verdict. For that reason, I grant a new trial in the alternative.
Id. at 13.
The actual issue here was whether a "player" or "application" was a "file" or merely some code that may or may not have been part of that file. It does sound pretty confusing and the swathes of expert testimony cited in the opinion don't appear to shed much light on the issue.
I can't recall previously seeing the Court grant a new trial where the issue was so clearly framed as a confusing presentation, rather than some more discrete, technical error (e.g., a jury instruction, a misstatement of fact by counsel, etc,). I suspect we will see it cited frequently in future especially in other software cases.
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