Pop Top Corp v. Rakuten Kobo Inc.

Background

Pop Top Corp. brought a patent-infringement case against Rakuten Kobo Inc., the maker and distributor of the Kobo App, an application for reading eBooks. Pop Top alleged that the Kobo App infringed the sole claim of U.S. Patent No. 7,966,623, which concerns methods and systems for highlighting portions of web pages and other internet documents so they can later be recalled or shared.

The Kobo App includes software for Kobo eReader devices, smartphone and tablet applications, and desktop applications. Kobo delivers eBooks from its server to the user’s Kobo App in the electronic-publication, or “ePub,” format. Pop Top contended that the Kobo App’s ability to highlight text literally infringed the patent.

Motion and governing standard

Kobo moved for summary judgment of non-infringement. Summary judgment is appropriate when there is no genuine dispute about a fact that could affect the result and the moving party is entitled to judgment under the law. In a patent case, the court determines what the patent claim means and then asks whether the accused product contains every required claim limitation, either literally or through a legally recognized equivalent.

Kobo argued that the Kobo App did not meet four limitations in the patent’s only claim. The claim requires, among other things, an internet document that includes code for invoking a highlighting service; a highlighting service hosted on a server different from the content server; a browser request to invoke the service; and the service’s enabling of highlighting for the internet document.

Court’s analysis

The court concentrated on the first limitation. Pop Top’s infringement contentions defined an “internet document” as a web-based document opened with a browser and asserted that an eBook delivered to the Kobo App qualified. Kobo argued that, even under that definition, the eBooks did not include code for invoking a highlighting service.

The court found that Pop Top failed to identify specific code in the eBooks that invoked the highlighting service. Kobo submitted evidence that the eBooks’ JavaScript concerned functions such as page count, pagination, reading progress, font size, and night reading, and did not concern highlighting. Kobo also submitted evidence that highlighting functionality was based entirely on code in the Kobo App stored on the user’s device. Pop Top did not submit evidence contradicting that showing.

Pop Top offered additional theories in its opposition and at the hearing, including theories concerning code identifying an eBook as a reflowable ePub file and commands that display highlighting controls. The court said it could not consider the first new theory because Pop Top had not disclosed it in its infringement contentions and had not shown good cause to amend them. The court also found that the later theory was unsupported and inconsistent with the evidence, which located the relevant highlighting code in the Kobo App rather than in the eBook.

Because Pop Top offered only conclusory statements and no evidence establishing a factual dispute about the first limitation, the court held that Pop Top could not prove infringement. The court therefore did not reach Kobo’s arguments concerning the other three limitations.

Disposition

The court granted Kobo’s motion for summary judgment of non-infringement. The parties acknowledged that a ruling for Kobo would determine the entire case, so the court ordered the Clerk to close the case and enter judgment in Kobo’s favor.