Intouch Techs., Inc. v. Vgo Commc'ns, Inc.

• Decision Date: 09 May 2014
• Docket Number: No. 2013–1201.,2013–1201.
• Citation: 751 F.3d 1327
• Parties: InTOUCH TECHNOLOGIES, INC., doing business as InTouch Health, Plaintiff–Appellant, v. VGO COMMUNICATIONS, INC., Defendant–Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

751 F.3d 1327

InTOUCH TECHNOLOGIES, INC., doing business as InTouch Health, Plaintiff–Appellant,

v.VGO COMMUNICATIONS, INC., Defendant–Appellee.

No. 2013–1201.

United States Court of Appeals, Federal Circuit.

May 9, 2014.

Donald R. Ware, Foley Hoag LLP, of Boston, MA, argued for plaintiff-appellant. With him on the brief were Sarah Cooleybeck and Brian C. Carroll. Of counsel was Joseph S. Cianfrani, Knobbe, Martens, Olson & Bear, LLP, of Irvine, CA.

Lauren B. Fletcher, Wilmer Cutler Pickering Hale and Dorr LLP, of Boston, MA, argued for defendant-appellee. With her on the brief were William F. Lee and Sarah R. Frazier. Of counsel on the brief were Marc E. Hankin and Kevin Schraven, Hankin Patent Law, APC, of Los Angeles, CA.

Before RADER, Chief Judge, LOURIE, and O'MALLEY, Circuit Judges.

O'MALLEY, Circuit Judge.

The world has come a long way; this is a patent case about robots. InTouch Technologies,Inc. d/b/a InTouch Health (“InTouch”) and VGo Communications, Inc. (“VGo”) both manufacture remote telepresence robot systems. In 2012, InTouch filed a First Amended Complaint in the Central District of California alleging that VGo's remote telepresence robot system infringed several of its patents, including U.S. Patent Nos. 6,346,962 (“the '962 patent”), 6,925,357 (“the '357 patent”), and 7,593,030 (“the ' 030 patent”) (collectively, “the asserted patents”). The asserted patents generally relate to remote telepresence technology regarding camera movement, arbitrating control of a robot, and a call back mechanism to notify a previously denied user that the robot is now available. VGo counterclaimed for declaratory judgment of non-infringement and invalidity.

After a jury trial, the jury returned a verdict of noninfringement of all three asserted patents. It also found claim 79 of the '357 patent and claim 1 of the '030 patent invalid based on obviousness. The district court subsequently denied motions for judgment as a matter of law (“JMOL”) and a new trial regarding non-infringement, invalidity, and numerous evidentiary rulings.

InTouch appeals from the district court's final judgment of non-infringement and invalidity, and denial of the post-trial motions for JMOL on those questions. InTouch also appeals from its motion for a new trial based on two allegedly erroneous evidentiary rulings, one which InTouch says tainted the infringement verdict and another which InTouch says calls into question the integrity of the invalidity judgments. For the reasons explained below, we affirm the judgment of non-infringement of the asserted patents and the denial of the motion for a new trial on infringement, reverse the findings of invalidity regarding the '357 and '030 patents, and remand to vacate the district court's invalidity judgments.

I. BACKGROUND

A. Factual Background

1. Asserted Patents

InTouch is the owner of the asserted patents. In 2001, InTouch developed a remote telepresence robot system for the health care industry that allows physicians and family members to visit a patient through a remote terminal without travelling to the physical location of the patient. This system permits a user to operate a robot from a remote terminal, e.g., computer or tablet. The InTouch robot contains several features, including a video display, two-way audio, and a camera. Based on the user's instructions, the robot travels throughout a hospital, and a user appears through live video on the video display as a remote presence. For example, a doctor can conduct “in-person” patient consultations from his office in another location through a computer.

On July 25, 2002, InTouch filed a patent application directed to a “Medical Tele–Robotic System.” '357 Patent, at [54], [75] (filed July 25, 2002). This application issued as the '357 patent on August 2, 2005. The technology relates to controlling access to a shared remote telepresence robot among multiple users. On September 30, 2008, the U.S. Patent and Trademark Office (“PTO”) received an ex parte reexamination request for the '357 patent. After this reexamination, the PTO issued a reexamination certificate cancelling several original claims, allowing certain other claims upon amendment, and allowing new claims 79–94. Asserted independent claim 79 of the '357 patent states:

A robot system, comprising:

a mobile robot that has a camera and a monitor;

a first remote station that can access said mobile robot; a second remote station that can access said mobile robot; and,

an arbitrator that can control access to said mobile robot by said first and second remote stations, said arbitrator includes a call back mechanism that informs a user that was denied access to said mobile robot that said mobile robot can be accessed.

'357 Patent col. 2 ll. 50–59 (ex parte reexamination certificate) (emphasis added). The '357 patent explains that the robot “may be controlled by a number of different users. To accommodate for this the robot may have an arbitration system.” Id. col. 5 ll. 55–57. The specification then describes separating users into classes and providing override input commands. Id. col. 5 ll. 61–65. It provides that “[t]he arbitration scheme may have one of four mechanisms; notification, timeouts, queue and call back.” Id. col. 6 ll. 43–44. “The notification mechanism may inform either a present user or a requesting user that another user has, or wants, access to the robot.” Id. col. 6 ll. 44–47. “The call back mechanism informs a user that the robot can be accessed. By way of example, a family user may receive an e-mail message that the robot is free for usage.” Id. col. 6 ll. 50–54.

The '030 patent is a continuation-in-part of the '357 patent, and shares a common specification. It is titled “Tele–Robotic Videoconferencing in a Corporate Environment.” '030 Patent, at [54] (filed Oct. 14, 2004). This patent issued on September 22, 2009. Asserted independent claim 1 of the ' 030 patent states:

A method for conducting a business teleconference, comprising:

moving a robot that has a screen, a camera, a speaker and a microphone, across a surface of a business facility with at least one signal from a first remote station that has a screen, a camera, a speaker and a microphone;

transmitting images and sound between the first robot and the first remote station and displaying the image captured by the remote station camera on the robot screen;

moving the robot across the surface of the business facility with at least one signal from a second remote station that has a screen, a camera, a speaker and a microphone;

transmitting images and sound between the robot and the second remote station; and,

arbitrating to control access to the robot by either the first remote station or the second remote station.

030 Patent col. 6 ll. 18–33 (emphasis added).

InTouch acquired the '962 patent in November 2009 from IBM. The '962 patent is titled “Control of Video Conferencing System with Pointing Device.” '962 Patent, at [54] (filed Feb. 27, 1998). The technology relates to controlling the movement of a remote video camera in real time directly responsive to movement of a remote mouse pointer. The patent issued on February 12, 2002.

InTouch asserted claims 1 and 8 of the '962 patent against VGo. Claim 1 of the '962 patent states:

A method of controlling operations of a video conferencing system, the method comprising the steps of:

controlling in real time the operation of a camera which provides video to be displayed through input to a pointing device so as to provide direct control of the motion of the camera through movement of the pointing device, wherein said step of controlling comprises the steps of:

receiving input from the pointing device corresponding to movement of the pointing device to provide movement data;

actuating the camera associated with the video conferencing system in a direction indicated by the movement data;

initiating a timer upon receipt of the movement data; and

stopping motion of the camera if the timer expires without receiving subsequent movement data.

'962 Patent col. 9 ll. 21–39 (emphases added).

Claim 8 of the '962 patent states:

A system for controlling operations of a video conferencing systems comprising:

a camera capable of remote control operation; and

means for controlling in real time the operation of the camera which provides video to be displayed through input to a pointing device so as to provide direct control of the motion of the camera through movement of the pointing device, wherein said means for controlling comprise:

means for receiving input from the pointing device corresponding to movement of the pointing device to provide movement data;

means for actuating the camera associated with the video conferencing system in a direction indicated by the movement data;

means for initiating a timer upon receipt of the movement data; and means for stopping motion of the camera if the timer expires without receiving subsequent movement data.

Id. col. 10 ll. 9–39 (emphases added).

2. VGo's Accused Product

VGo, founded in 2007, produces low-cost remote telepresence robot systems that allow a user at one location to control remotely a robot to interact with others at a second location. The VGo system includes three main components: the VGo App, the VGoNet, and the VGo robot. A user runs the VGo App program from a computer or tablet to connect to a VGo robot through the VGoNet, a network service in the cloud that connects authorized VGo users with VGo robots. Similarly, the VGo robot contains several features, including a video display, two-way audio, and a camera.

The parties generally agree on how the VGo system operates. See Joint Appendix (“J.A.”) 15000–72, 10750–59, 10880–93. The VGo system allows up to twenty preauthorized users to gain control of a robot. When a user launches the VGo App, he sees a window containing a “buddy list” of VGo robots with color-coded status indicator buttons to the left of each robot name. The color of the status indicator...