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Despite failing to get its patent infringement case moved from the plaintiff-friendly Eastern District of Texas and a court order applying a rare infringement theory, Vistaprint’s defense team scored a defense victory in the district. On June 23, a jury ruled in ColorQuick LLC v. Vistaprint Ltd. that Vistaprint did not infringe a ColorQuick patent covering computer technologies for printing documents and other media. Losing its bid to transfer the case to the District of Massachusetts at the U.S. Court of Appeals for the Federal Circuit last December was the defendant’s first hurdle. The North American headquarters of the Netherlands-based Vistaprint is in Massachusetts, and the defense team wanted to subpoena former Vistaprint employees, said Tom Friel, Vistaprint’s co-lead defense counsel the head of the intellectual property litigation practice at Palo Alto, Calif.-based Cooley. “That was the major motivation,” Friel said, not concern about an unfair shake from an Eastern District of Texas jury. The case took an unusual turn on June 9, when Judge Leonard Davis accepted a recommendation from a magistrate judge. Davis granted Vistaprint’s summary judgment motion, finding that the company did not literally infringe ColorQuick’s patent. But Davis’ order also allowed ColorQuick’s claim to move forward under what is known as the doctrine of equivalents. The rarely allowed doctrine allows a patent owner to claim patent infringement when the infringing item doesn’t literally fall within the scope of the patent claim but is equivalent to the invention. “There was a moment I thought it might have hurt us, but it ended up helping us,” Friel said. Friel said that ColorQuick’s patent is for a process for prepress that involves revising a computer file in response to user changes. The Vistaprint system, on the other hand, creates a new file with user changes. “ColorQuick had to prove that saving that image as a new file was the equivalent” of its invention, Friel said. The jury ultimately decided that Vistaprint didn’t infringe under the doctrine. But even if ColorQuick had been able to convince the jury, it would have had to get by the judge, Friel said. Since the doctrine of equivalents expands a patent owners’ claim, “there are two very important checks on how far a plaintiff can go to expand [its] claims,” Friel said. The first is that the patent owner must not have given up the equivalent claims during patent prosecution, he said. The second is that the change can’t capture or ensnare prior art–published information about the claimed invention’s subject matter, including issued patents. The parties had a short bench trial on those issues on June 23, while the jury was deliberating. “We never got to the equitable side of the case because the jury came in with verdict saying there’s no infringement under the doctrine of equivalents,” Friel said. “They couldn’t convince [the] jury that [the] expanded claim covered their patent.” Although patent owners almost always claim infringement both literally and under the doctrine of equivalents, the vast majority of cases focus on literal infringement, Friel said. “The one lesson I learned is to pay a lot more attention to doctrine of equivalents in expert reports,” Friel said. Patrick Conroy, a partner at Dallas-based Shore Chan Bragalone DePumpo, one of ColorQuick’s lawyers, declined to comment. ColorQuick spokesman Scott Levy said the company had no comment. Sheri Qualters can be contacted at [email protected] .

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