M.I.T. v. Harman Intern. Industries, Inc.

Citation584 F.Supp.2d 297
Decision Date09 September 2008
Docket NumberCivil Action No. 05-10990-DPW.
CourtU.S. District Court — District of Massachusetts

Kimberly Ann Mottley, Steven M. Bauer, Jacob K. Baron, John W. Pint, Proskauer Rose, LLP, Boston, MA, for Plaintiff.

Colleen M. Garlington, Craig D. Leavell, Michelle A.H. Francis, William A. Streff, Jr., Kirkland & Ellis LLP, Chicago, IL, Edward S. Cheng, James W. Matthews, Robert J. Muldoon, Jr., Courtney Amber Clark, Sherin and Lodgen LLP, Boston, MA, for Defendant.


DOUGLAS P. WOODLOCK, District Judge.

The Massachusetts Institute of Technology ("MIT") filed this action against Harman International Industries Inc. ("Harman") for patent infringement of U.S. Patent No. 5,177,685 ("'685 patent"). The '685 patent is an automobile navigation system using spoken word directions, entitled "Automobile Navigation System Using Real Time Spoken Driving Instructions." The '685 patent is also known as "Back Seat Driver Patent," and is part of a project that MIT graduate student Jim Davis ("Davis") developed at the MIT Media Laboratory ("Media Lab") with his faculty advisor Chris Schmandt ("Schmandt") when writing and defending his doctoral thesis called "Back Seat Driver." Harman has filed a motion for summary judgment contending that '685 patent claims 1, 42 and 45 are invalid under the "public use" bar of 35 U.S.C. § 102(b) because the invention was allegedly in public use on the critical date, more than one year before patent application was filed. MIT has filed a cross-motion contending the invention was not in public use before the critical date and also seeking to establish that claims 1, 42 and 45 of '685 patent are not invalid under the § 102(b) "printed publication" bar.1

Magistrate Judge Judith G. Dein has issued a Report and Recommendation ("R & R") in support of the grant to defendant Harman of summary judgment on the issue that the '685 patent is invalid under the "public use" bar of 35 U.S.C. § 102(b).2 In addition, Magistrate Judge Dein recommended the grant of summary judgment to plaintiff MIT on the issue that claims 1, 42 and 45 of '685 patent are not invalid under the § 102(b) "printed publication" bar. Id. Both parties submitted independent de novo review memoranda contesting aspects of these recommendations. Following that review, I have determined to deny summary judgment to both parties on the public use bar issue and to grant the MIT motion for summary judgment on the printed publication issue, for reasons explained more fully below.

I. Factual Background
A. Back Seat Driver project

Both Harman and MIT generally agree that Magistrate Judge Dein's summary of the facts is accurate, with minor disputes that I will note as relevant below. I will also add reference to certain facts regarding experimentation, which the Magistrate Judge did not include in the factual narrative of the R & R.

Plaintiff MIT applied for the '685 patent on August 9, 1990, and received it on January 5, 1993. Davis and Schmandt are named inventors on the '685 patent and MIT is the assignee. The "critical date" for purposes of the public use bar § 102(b) summary judgment motion is August 9, 1989, one year before the day MIT filed the '685 patent application.

Claim 1 of the '685 patent is:

An automation navigation system which produces spoken instructions to direct a driver of an automobile to a destination in real time comprising [of]:

[1] computing apparatus for running and coordinating system processes,

[2] driver input means functionally connected to said computing apparatus for entering data into said computing apparatus, said data including a desired destination,

[3] a map database functionally connected to said computing apparatus which distinguishes between physical and legal connectivity,

[4] positioning sensing apparatus installed in the automobile and functionally connected to the said computing apparatus for determining the automobile's current position,

[5] a location system functionally connected to the said computing apparatus for accepting data from the said position sensing apparatus, for consulting said map database, and for determining the automobile's current position relative to the map database,

[6] a route-finder functionally connected to the said computing apparatus, for accepting the desired destination from said driver input means and the current position from said location system, for consulting said map database, and for computing the route to the destination,

[7] a discourse generator functionally connected to said computing apparatus for accepting the current position form the said location system and the route from the route finder, for consulting said map database, and for composing discourse including instructions and other messages for directing the driver to the destination from the current position,

[8] a speech generator functionally connected to said discourse generator for generating speech from the said discourse provided by the discourse generator, and

[9] voice apparatus functionally connected to said speech generator for communicating said speech provided by the said speech generator and said driver. Claim 42 of the '685 patent is:

The automobile navigation system of claim 1 wherein each intersection in a route is classified into one type in a taxonomy of intersecting types, and the disclosure generated in relation to each intersection depends on the type.

Claim 45 of the '685 patent is:

The automobile navigation system in claim 1 wherein each discourse generated comprises a long description of an act given substantially before the act is to be performed and a short description given at the time the act is to be performed.

From 1988 to 1989, in efforts to receive sponsorship, MIT provided general information to various companies regarding several of its Media Lab projects, including the Back Seat Driver project. MIT encouraged Media Lab sponsors to "leverage" Media Lab resources and to use the Lab "as a window" to investments, startups and potential opportunities. MIT authorized sponsors to "visit, view and discuss hundreds of working prototypes developed by the Lab," and gave them access to a sponsor-only website where they could view certain technical notes on research projects. NEC Electric ("NEC") became the corporate sponsor for the Back Seat Driver project, providing at least $400,000 in funding, and eventually also became the licensee of the technology.

Davis and Schmandt (the "researchers" or "inventors") began conducting field trials of the Back Seat Driver in April 1989. They installed a prototype version of the Back Seat Driver system in a 1988 Acura Legend and used this technology during these field trials. During the field trials, various drivers operated the vehicle and one of the researchers sat beside them. Either Davis or Schmandt was in the car at all times while the drivers operated the vehicle using the Back Seat Driver system, and thus the researchers maintained control over who used the technology at all times during the trials. The researchers never showed the drivers how the technology worked, aside from what the drivers themselves observed from using the technology.

By June 1989 the researchers were sure the Back Seat Driver would work, but continued testing to "`ensure that the system was safe, effective, durable, and repeatable.'" They conducted at least fifty trials prior to the critical date of August 9, 1989. The researchers used only one car to conduct all the trials and parked the car in an MIT garage that required card access. MIT owned the car and the equipment prior to and for some time after the critical date. Drivers received no compensation for their participation and they lacked an expectation that the Back Seat Driver device would be available to them for personal use after testing.

Version 2 of the invention was used during the field trials, where a portion of the Back Seat Driver equipment was located in the car, the rest was at the Media Lab, and researchers used cellular phones to relay signals between the two locations. Members of the public observing the car from outside were unable to see any components of the Back Seat Driver System. Davis and Schmandt reported that Version 2 was working well, that they were able to make dozens of successful trips, and that they had a good idea of the features they should choose to include in the instructions. Version 2, nevertheless, still had problems with communication between the equipment in the car and the Media Lab and the inventors took steps to remedy them. Either shortly before or shortly after the critical date, the researchers developed and implemented Version 3 of the invention, where the entire system was installed in the car. They did this to make a "more reliable, cheaper, and a much more convincing `concept car.'"

The parties disagree about whether claims 1, 42 and 45 of the '685 patent were included in Version 2 of the Back Seat Driver and thus whether these claims were part of all fifty field trials. Magistrate Judge Dein concluded, based on the evidence adduced on this issue, and I agree, that in fact claims 1, 42 and 45 of the '685 patent were embodied in Version 2 and accordingly were part of all of the field trials. She also found as a matter of law that these claims were "reduced to practice" prior to the critical date,3 but that there was no evidence that MIT commercially exploited the invention. Neither party challenges these conclusions.

MIT contends, and I agree, that the researchers needed to experiment4 with the invention using "field trials occurring on public streets that formed part of the digitalized map." On July 31, 1989, the prototype version of the Back Seat Driver was having a "loss of carrier problem," where the data transmission was functioning...

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