IP Law Daily, PATENT—Fed. Cir.: Summary judgment affirmed in software patent dispute, (Sep 22, 2023)

By Kevin M. Finson, J.D.

Summary judgment was appropriate because prosecution of the asserted patents was barred by a prior settlement agreement.

A patentee’s infringement suit against Siemens Industry was barred by its prior settlement agreement with third-party Microsoft, the manufacturer of the infringing software used in Siemens’ accused cameras, printers, and scanners, the U.S. Court of Appeals for the Federal Circuit has held. The patentee had granted a license to any third-party products to the extent that they were combined with Microsoft products and the entirety of the accused product depended on Microsoft’s .NET product. The district court also properly dismissed Siemens Industries’ German parent corporation for lack of personal jurisdiction (Caddo Systems, Inc. v. Siemens Aktiengesellschaft (AG), September 22, 2023, Taranto, R.).

Caddo Systems, Inc., and 511 Technologies, Inc. (collectively, Caddo) were the owners of U.S. Patents Nos. 7,191,411; 7,216,301; 7,640,517; 7,725,836; 8,352,880; and 10,037,127, all of which were related and summarized by Caddo as “directed towards claim methods for navigating an information structure by, for example, providing a graphical user interface displaying and enabling the selection of an ‘active path’ and ‘active links’ once the ‘active path’ and the ‘active links’ are ‘automatically constructed.’”

Caddo brought suit for infringement against Siemens Aktiengesellschaft (AG) (Siemens AG) and Siemens Industry, Inc. (Siemens Industry) in the federal district court in Chicago. The trial court granted summary judgment in favor of Siemens Industry based on a prior settlement agreement and dismissed the claims against Siemens AG for lack of personal jurisdiction. Caddo appealed both rulings.

Settlement. Caddo had previously engaged in litigation with Microsoft, which had resulted in a license and settlement agreement limiting Caddo’s ability to enforce the patents asserted in this case against certain third-party products to the extent that those third party products were combined, used, or aggregated with a Microsoft product. Siemens asserted that the entirety of the accused Siemens product, called RadBreadcrumb, used and would not function without Microsoft’s .NET software. Caddo was unable to point to any evidence in the summary judgment record to contradict this conclusion or to show that any portion of the accused product was not intertwined with .NET.

Personal jurisdiction. The court noted that at all relevant times Siemens AG was a German company, organized under German law with its principal places of business in Germany, and that its website, which was maintained and hosted outside the United States, did not provide a direct means for users to buy products in the United States or elsewhere. Accordingly, there was no basis in the record for either general or specific personal jurisdiction.

The Federal Circuit affirmed the district court’s decisions.

The Case is No. 22-1623.

Attorneys: Alex Chan (Devlin Law Firm LLC) for Caddo Systems, Inc. and 511 Technologies, Inc. Kristin L. Cleveland (Klarquist Sparkman, LLP) for Siemens Aktiengesellschaft (AG) and Siemens Industry, Inc.

Companies: Caddo Systems, Inc.; 511 Technologies, Inc.; Siemens Aktiengesellschaft (AG); Siemens Industry, Inc.

Cases: Patent FedCirNews IllinoisNews