Washington, DC (August 25, 2008) -- Venable litigators J. Douglas Baldridge and Caroline Petro Gately assisted by Dr. Michael A. Sartori, Chair of Venable's Patent Prosecution Group, recently obtained dismissal with prejudice of a patent infringement suit filed against The Boca Raton Resort & Club (BRRC) for allegedly infringing U.S. Patent 5,253,341 (the '341 patent), known in trade circles as the "JPEG-On-The-Internet" patent. The plaintiff and holder of the '341 patent, Global Patent Holdings, LLC (Global Patent), is in the business of demanding royalties for use of the '341 patent and suing companies and others that do not comply. Global Patent also brought suit against 18 other parties in a total of four district court cases asserting the same claims.
In its case against BRRC, Global Patent claimed that the hotel group infringed the '341 patent because its webpage (www.bocaresort.com) contains JPEG images that an Internet user who visits the webpage may view. Pursuing a strategy that was not adopted by the 19 other companies sued by Global Patent, the Venable lawyers argued that Global Patent could not support a claim of infringement because some of the infringing acts were alleged in the complaint to be taken by the website owner (the hotel) and some by an Internet user. Relying on the reasoning of two recent Federal Circuit decisions, the Venable lawyers argued that infringement of a process patent requires the defendant to perform every step of the claim or direct or control the steps performed by another party. Plaintiff Global Patent's theory of "joint infringement" ran counter to the recent Federal Circuit case law.
After full briefing and oral argument, Judge Kenneth A. Marra of the United States District Court for the Southern District of Florida accepted Venable's theory and dismissed the case with prejudice.
"We recognized the force of the recent precedent and pursued a focused strategy against Plaintiff Global Patent to our client's advantage." said Gately, a litigation partner in Venable's Washington, D.C. office. The other 18 parties defending against Global Patent's claims either settled or are still embroiled in litigation.
"From the beginning of the case we worked with our client to devise a strategy that our co defendants did not follow" said Baldridge, head of Venable's D.C. Litigation Practice Group. Baldridge added, "The Court's decision serves as a much needed blueprint for protecting website owners from suits of this nature."
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