Lodsys reportedly asserts that Iconfactory infringes one of their patents. If it's the '078, I think they are wrong.
Before we dig more deeply into the Abelow '078 asserted by Lodsys, let's quickly review what it means to infringe a patent. Infringement of a patent is defined in 35 U.S.C 271:
35 U.S.C. 271 Infringement of patent.
(a) Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States, or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.
(b) Whoever actively induces infringement of a patent shall be liable as an infringer.
(c) Whoever offers to sell or sells within the United States or imports into the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer.
I have seen no mention that Lodsys is accusing anyone of anything other than direct 271(a) infringement. Inducement of Apple to infringe or selling a component for use by Apple in their infringement seem to be off the table based on Lodsys's assertion that Apple is licensed (assuming the "nameplate products and services" language used by Small does not hide some relevant limitation on the license).
Under 271(a), then, to infringe, the party must make, use, offer to sell, or sell the patented invention. Lodsys is sending letters to application developers. These particular letters are not going to Apple, which conducts the sale, or users, who use the apps, so we'll focus on the "makes" aspect of 271(a). (An argument could be made that the developers "sell" to Apple. I believe the analysis will end up being the same as "makes" and will focus on "makes" for now.)
What is the patented invention that the application developers are presumably being accused of making? Lodsys has four patents, but the '078 is the one that has received mention in the initial reports. For lack of better knowledge, we will assume claim 1 of the '078 is being asserted:
1. A system comprising:
- units of a commodity that can be used by respective users in different locations,
- a user interface, which is part of each of the units of the commodity, configured to provide a medium for two-way local interaction between one of the users and the corresponding unit of the commodity, and further configured to elicit, from a user, information about the user's perception of the commodity,
- a memory within each of the units of the commodity capable of storing results of the two-way local interaction, the results including elicited information about user perception of the commodity,
- a communication element associated with each of the units of the commodity capable of carrying results of the two-way local interaction from each of the units of the commodity to a central location, and
- a component capable of managing the interactions of the users in different locations and collecting the results of the interactions at the central location.
For the "making" to be infringement, the infringing system would need to meet each limitation of the claim.
Let's use Twitterrific as an example. Under one possible claim construction, we would call Twitterrific a "unit of a commodity," and multiple instances of Twitterrific installed across different users' devices the "units of a commodity." Then, somehow, the "system" would necessarily be something that encompasses those multiple instances of Twitterrific.
This construction is problematic for multiple reasons. First, Iconfactory does not make, to my knowledge, a "system" with multiple instances of Twitterrific. More importantly, IconFactory does not make a system with "a memory." Iconfactory writes software applications that are uploaded to Apple's servers, downloaded by users, and run on iPhones, iPod Touches, or iPads with memory.
So, we instead need a construction where each "unit of commodity" has "a memory." Clearly, then, the iPhones and iPads must be the units of commodity. The "system" then necessarily includes multiple iPhones, iPod Touches, and iPads. IconFactory does not make or sell iPhones, iPod Touches, or iPads.
Another dead end.
Maybe I have the wrong claim? Perhaps. Independent claim 54, though, shows some of this patent's true colors and has "facsimile equipment" substituted for "commodity." (Make note of that for later when we focus on construing "commodity.") IconFactory does not make fax machines, just icons of them. Claims 60 and 69? Those seem to need the iTunes Store side of things included for infringement, and Iconfactory does not make the iTunes Store.
For the moment, I am failing to see any plausible claim construction that leads to a reasonable assertion of infringement of claim 1 of the '078 by Iconfactory. They would need to make or sell multiple units of a commodity, each with a memory... hey, wait a minute... are there memory chips in those Ollie dolls?
More to come.
(Disclaimers: 1) Nothing in this or any article should be construed as legal advice. 2) I have had no contact from anyone at Iconfactory. I use them only as an example. I'd love to see the letter they got, though, because this isn't making sense.)