PerdiemCo LLC v. Geotab Inc. (E.D. Tex. 2016)

PerdiemCo LLC v. Geotab Inc. (E.D. Tex. 2016)

IPR2016-01061, -01062, -01063, -01064, and -01278 (Pat. Tr. App. Bd. 2016)

Fitzpatrick Obtains Summary Judgment of Non-infringement of Asserted Method Claims, and Institution of Inter Partes Review of All Challenged Claims, on Behalf of Geotab Inc.

On November 8, 2016, Judge Gilstrap of the Eastern District of Texas ruled in favor of Fitzpatrick’s client Geotab Inc., granting summary judgment of non-infringement of asserted method claims 23 and 27 of U.S. Patent No. 8,223,012.  These method claims are directed to conveying information package information among a plurality of computing devices based on an information package access code.

Fitzpatrick successfully established that any infringement of the asserted method claims was, at best, divided among multiple parties and that the actions of end users of Geotab’s software were not attributable to Geotab under Akamai.  During claim construction, Fitzpatrick argued (and the Court agreed) that the “to define” elements recited in independent claim 18 represented affirmative steps that must be performed because “the purpose of the interface is to perform these steps, and because the last step recited in claim 18 specifies that the information package is conveyed to a computing ‘based on said information package access code.’”

Judge Gilstrap then found on summary judgment that Geotab itself did not perform the “to define” steps of claim 18, and rejected Plaintiff’s assertion that the end-users’ actions were attributable to Geotab because Geotab conditions end-users participation and receipt of the full benefit of the accused system on the end-user’s entry of the requisite data.  Judge Gilstrap sided with Fitzpatrick and held that “[i]t will always be true that a user’s benefit from using software will increase as the user explores additional functionality,” and “[t]hat is not what the Federal Circuit meant by ‘conditions participation.’”

By the first week of December 2016, Fitzpatrick also prevailed in obtaining institution of inter partes review of all challenged claims of four of the patents asserted in the district court litigation—U.S. Patent Nos. 8,223,012; 8,493,207; 8,717,166; and 9,003,499.  Later in December, the Board also instituted review on all challenged claims of U.S. Patent No.  9,071,931, the remaining patent asserted against Geotab in the district court litigation.  Patent Owner disclaimed all challenged claims for the ’207 and ’166 patents in March 2017 in view of the Petitions.

Geotab was represented by Fitzpatrick attorneys Bruce Haas, John Carlin, Douglas Sharrott, Natalie Lieber, and Sean McCarthy.