Sony Fights Back Against ObjectVideo

JH
John Honovich
•Published May 09, 2011 00:00 AM
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Since ObjectVideo filed suit against Bosch, Samsung and Sony in April 2011, speculation has been rife over whether these large companies would pay up to avoid the nuisance or use their large scale to contest.

For Sony, at least, it has become clear that they will fight back against the allegations of patent infringement. In this note, we examine how and why Sony contends the patents are invalid.

Our analysis indicates that Sony's position is grounded in 2 fundamental aspects of US patent law: (1) "Conditions for patentability; novelty and loss of right to patent" and (2) "Duty to disclose information material to patentability." Let's start by examining what these mean:

  • Novelty and loss of right to patent is defined in 35 U.S.C. 102. Essentially, if an invention has been made known to the public for more than 1 year prior to a patent application filing, a person shall not be entitled to a patent.
  • Duty to disclose information (37 CFR 1.56 [link no longer available]), more commonly known as inequitable conduct, requires an applicant to "disclose to the [Patent] Office all information known to that individual to be material to patentability." If the applicant does not, even if the patent is otherwise valid, the courts can decide not to enforce the patent.

Here's essentially what Sony is claiming: A) ObjectVideo disclosed the 'art' in question (tripwires, calibration, etc.) more than a year prior to filing their first patent application cited in the suit and B) ObjectVideo willfully failed to disclose information showing this when they filed the patent.

The case is made in Sony's 64 page court filing - "Sony Electronic's Answers and Counterclaims" (25MB PDF). Of those 64 pages, the majority is boilerplate. The most interesting and relevant section is pages 48 - 57. The following are key excerpts that will help you understand Sony's claims:

  • Sony claims, "ObjectVideo developed, offered to sell, or sold its Automated Video Surveillance (AVS) product more than one year prior to the filing of US Patent Application No. 10/704,645" in 2003. The AVS product and publicly available documents 'taught' some of the claimed elements in the patents and were, therefore, prior art.
  • Sony claims that the applicants knew of the AVS product but failed to disclose 'with deceptive intent' to avoid prejudicing the pending patent applications.
  • Sony cites a "Critical Assets' IEEE White paper from December 2002 (see copy) that was not disclosed in the applications.

While we are not attornies and offer no legal opinions, one important question remains for us. The application for the first of ObjectVideo patents listed in this lawsuit was filed October 9, 2001 (the '945' patent). Even if the claims against the other applications (filed in 2003 or later) are deemed valid, could the original patent still be enforced?

For another defense agains the OV patents, see our report on a claim that late 1990 patent applications in Japan show prior art that should invalidate OV's patents.