E-Data and Getty Images and Corbis
Success in this high profile patent infringement case owed much to extensive and creative prior art investigations and effective teamwork, both within Rouse and between Rouse and its client, Counsel, expert witnesses and US lawyers, and close co-operation with the legal team of the other Defendant.
Background
We act for Getty Images which owns libraries of images that can be accessed over the Internet. Corbis, a Bill Gates' company, is an arch commercial rival of Getty. Both Getty Images and Corbis were sued in the UK by a US company, E-Data, for infringement of ‘the Freeny Patent'. In spite of the commercial rivalry that existed between Getty Images and Corbis, the cooperation between their legal teams played an important role in the successful defence of the action.
E-Data was a ‘patent troll'. Its only assets in Europe, the US and Canada were the Freeny patents. It had made substantial sums from licences granted under the patents. Infringement proceedings had been brought, or threatened, in both Europe and the US against a number of corporations, including Microsoft, HMV, Od2, and Apple (in relation to its iTunes service). We understood that all these actions had been settled and were concerned as to why such companies had caved in to a patent that, in our view, was clearly invalid. We took specific advice from Leading Counsel. He confirmed our view and that the patent was invalid and not infringed and the client decided to defend the action.
The Freeny patent describes a system for the manufacture on demand of articles embodying pieces of information (e.g. records embodying sound recordings) at the place where they were to be sold (e.g. a record shop). The patent had expired in Marc h 2005. E-Data was claiming damages for past infringements. The priority date of the patent (i.e. the date that is relevant for determining a patent's validity) was 1985.
Issues
The main issue related to interpretation of the patent claims (the part of the patent that outlines its scope). E-Data interpreted the claims widely. Getty Images and Corbis interpreted the claims narrowly. If E-Data's wide interpretation was correct, Getty Images and Corbis might have infringed. If the narrow interpretation was correct, they did not. However, if E-Data's wide interpretation was correct, we argued that the patent's claims would be so wide as to cover almost all downloading of information from central databases. As many such systems were in operation in 1985, the patent would be invalid.
Preparation
One of the interesting aspects of the case was how much work was done in investigating the publications and systems that were in place in 1985. Our investigations led us to a lot of invaluable material – including a 1985 Compuserve manual purchased on eBay. It also put us in touch with a man who had retained all his copies of Compuserve magazine from the 1970s!
Result
The Court held that our interpretation of the patent was correct: Getty Images and Corbis did not infringe and the patent was invalid because of the existence of an earlier patent relating to an airline ticketing arrangement. We had uncovered the patent, by chance, as a result of a conversation with Getty Images' US lawyer.
