Kaufman v. Microsoft Corporation

Background

Michael Philip Kaufman, the owner of U.S. Patent No. 7,885,981, sued Microsoft Corporation. Kaufman alleged that Microsoft’s Dynamic Data software infringed the patent through direct infringement, induced infringement, contributory infringement, and willful infringement. The patent concerns data processing and relational computer databases. Its independent claims include a user-interface system with create, retrieve, update, and delete modes, along with processes for representing, navigating, and managing relationships across database tables.

Microsoft moved for summary judgment under Federal Rule of Civil Procedure 56. Summary judgment is appropriate when there is no genuine dispute about a material fact and the moving party is entitled to judgment under the law.

Non-Infringement

Microsoft argued that Dynamic Data could not infringe as a matter of law for two reasons. First, it argued that Dynamic Data did not automatically scan a database and apply a body of rules, as required by the claims. Second, it argued that each allegedly infringing display mode had to include all three claimed processes: representing, navigating, and managing.

The court denied summary judgment on both infringement arguments. The parties disputed which steps made up the database-scanning process and whether those steps were automatic in Dynamic Data and related tools. The court held that these were factual questions for a jury.

The court also held that the claim language did not necessarily require every one of the four display modes to include every one of the three processes. It explained that the patent’s context could support reading “and” to include “and/or,” particularly because managing functionality might be unnecessary in a retrieve mode. The court concluded that it could not resolve the issue as a matter of law before a trial developed the relevant facts.

Embodiment Evidence

Microsoft’s motion concerning embodiment was denied as moot because, at the final pretrial conference, the court had ruled that Kaufman could not introduce Schemalive at trial. The court stated that a patent owner need not produce a commercial device and that infringement is determined by comparing the accused product with the patent claims, not with the patent owner’s preferred or commercial embodiment. The court also stated that admitting Schemalive could confuse the jury and lead the trial to focus on comparisons with that product rather than with the patent claims.

Willful Infringement

The court granted summary judgment to Microsoft on willful infringement. It stated that knowledge of the patent is a necessary element of a willful-infringement claim and that the record contained no evidence establishing Microsoft’s pre-suit knowledge of the issued ’981 patent.

Kaufman relied on evidence that the ’981 patent application and publications concerning related technologies had appeared in communications involving Microsoft and patent authorities. The court held that knowledge of patent applications, including the application for the patent at issue, did not establish knowledge of the issued patent. The court also rejected Kaufman’s argument that filing the lawsuit itself supplied the required knowledge, stating that this was not the law in the Southern District of New York.

Disposition

Judge Alvin K. Hellerstein granted Microsoft’s motion for summary judgment in part and denied it in part. The motion was granted insofar as the willful-infringement claim was dismissed. The motion was denied in all other respects, and the court stated that trial would proceed as scheduled on the remaining claims. The Clerk was directed to terminate the open motion.