Thorner et al v. Sony Computer Entertainment America LLC et al
U.S. Court of Appeals for the Federal Circuit (On appeal from the U.S. District court, District of New Jersey)
Case No. 2011-1114 (originally 09-01894), Filed December 13, 2010 (originally April 21, 2009)
Case Update 05/23/2012:
On February 2, 2012, the U.S. Court of Appeals for the Federal Circuit vacated the New Jersey District Court’s decision previously reported below. The Federal Circuit reviewed the district court’s interpretation of the terms “attached” and “flexible,” noting that the general rule is that claims must be given their ordinary and customary meaning unless the patentee acts as his own lexicographer or the patentee disavows the full scope of the claim. Since the term “attached” met neither of these exceptions, the Federal Circuit determined that it should be given its ordinary and customary meaning that includes both internal and external attachment. The Federal Circuit also disagreed with the district court’s interpretation of the term flexible (“capable of being noticeably flexed with ease”). Thorner argued that this term should be given its ordinary and customary meaning that only requires the pad to be “capable of being flexed.” The Federal Circuit accepted Thorner’s interpretation and has remanded the case for further proceedings.
We previously reported (see original post below) about a spinoff from the Sony v. Immersion case dealing with haptic feedback technology. Craig Thorner had previously developed patents for Immersion and had also received payments from Sony for his work on vibrating touch technology. As we reported, Thorner sued Sony claiming that Sony’s lawyers induced him to accept less than favorable terms for his license. He sued Sony for monetary compensation for infringement on his vibrating touch feedback patent.
Specifically at issue was Thorner’s U.S. Patent # 6,422,941 (the ‘941 patent) titled “Universal Tactile Feedback System for Computer Video Games and Simulations.” According to Judge Brown, “attached to said pad” is construed to mean “affixed to the exterior surface of the flexible pad,” and as a result Sony does not infringe the ‘941 patent. He wrote that under the court’s construction of the phrase “attached to said pad” Sony did not infringe because “the patent claim limitation is not met with respect to their products.”
On November 4, 2010, the charges against Sony were dismissed in district court. The court’s judgment as to whether Sony’s technology infringed Thorner’s patent was determined by its construction of the phrase “attached to said pad.” After conducting Markman hearings over the disputed claim phrase, Chief Judge Garrett Brown of the New Jersey District Court dismissed all of Thorner’s patent claims against Sony without prejudice. The judge noted that he was dismissing the claims without prejudice in light of Thorner’s specific objection to the district court’s construction of “attached to said pad.” The parties also agreed to a stipulation of dismissal without prejudice, and Sony acknowledged that dismissal of the claims would not prejudice Thorner’s ability to assert those claims in the future, in this same case. The court noted that if the Federal Circuit reverses its construction of “attached to said pad” or applies a different construction, the parties may reassert all claims and issues on remand.
The dust has long settled on the Sony/Immersion haptic feedback suit, right?
Not quite. According to a complaint filed in Thorner v. Sony Computer Entertainment America, Inc., Case No. 09-01894 (NJ filed April 21, 2009), and amended recently, a witness from that case claims he was tricked into cooperating and signing away his own patent rights for a fraction of their worth.
According to the complaint, Craig Thorner was an engineer who held several patents that were also directed to haptic feedback technology, similar to those asserted by Immersion against Sony, and his patents were part of Sony’s after-trial attempt to invalidate Immersion’s patents.
The complaint alleges that days after the verdict against Sony, Thorner was contacted by another company that had also been targeted by Immersion. This other company, Performance Designed Products LLC (PDP), was a game distribution company, and (according to the complaint) needed Thorner’s help.
Thorner claims that in working with PDP, he ended up negotiating with them to license his own patents to them, and that in that negotiation process he sought help from the same attorneys that represented Sony. According to the complaint, those attorneys helped him with the license, and they encouraged him to accept terms that were less than favorable to Thorner (including a provision that could grant a patent license to Sony, and another one accepting royalty payments that were much less than he had originally sought).
Thorner now alleges that all that time, those attorneys were actually helping Sony get a better deal out of him, and that Sony and PDP were actually working together to get that deal. He has sued them for legal malpractice, and has sued Sony for infringement of his patents.
This case is just beginning, so we will have to wait to see the other side of the story, and to see how it all turns out. Stay tuned ….