Apple Gets Some Claims Dropped In Burst Patent Case

By Elaine Chow

Portfolio Media, New York (November 9, 2007)--After challenging the validity of four patents over high-speed networks for multimedia products, Apple Computer Inc. on Thursday won the dismissal of several claims. But the company was unable to kick all of Burst.com Inc.'s patents out of federal court.

Apple fired off three separate summary judgment motions in the U.S. District Court for the Northern District of California in late October. The motions claimed that Burst’s patents are indefinite and lacked enablement and that Burst took too long to bring claims against Apple’s iPod, iTunes and QuickTime.

In its motion alleging indefiniteness, Apple argued that claims in Burst’s four patents mention a “time compressed representation” that are not supported by the written description.

The claims at issue require that the time-compressed representation, which is construed as a compressed version of audio or video information, has an associated transmission time period that is faster than real time.

In another motion, Apple claimed that Burst’s patents are unenforceable based on a lack of enablement because the patents fail to teach experts in the field how to easily apply the full scope of the claimed invention.

Burst had claimed that Richard Lang’s invention involved a new model for digital media delivery. But Apple said the idea of sending compressed audio or video information faster than real time was not invented by Lang.

Apple alleged that Lang disclosed only one device, a fax compression chip, for performing compression in one of the patents at issue in the case. But this chip could not be used to practice the claimed invention using the disclosure in Lang’s application, and Lang knew of no one who had ever used it successfully, Apple said.

Apple also moved for partial summary judgment based on laches. Burst allegedly delayed bringing an infringement suit for more than 15 years after suspecting that Apple infringed its patents, Apple said.

The court on Wednesday looked over the four patents related to data compression and faster-than-real-time transmission for audio and video information and found that several claims had been predicated by three previous patents.

Specifically, six claims of U.S. Patent No. 5,164,839, which covers receiving audio/video source information, compressing the data, storing the compression and sending it faster than real time to a selected destination had already been discussed in several of the patents.

The court found that two claims in U.S. Patent No. 5,995,705 only differed from the ’839 patent in that it requires the compression have a burst time that is substantially shorter than real-time representation. Since that claim had been dismissed, the court dismissed two of the '705 patent's claims as well.

Five claims of patent no. 4,963,995, which covers the similar methods of data compression and transfer, and one claim in patent no. 5,057,932, which covers video and magnetic disk storage, were also tossed.

But Apple was unable to convince the court to throw out the entire lot, especially in regard to claims that require-time compression methods.

Apple first sued Burst in January 2006, seeking declaratory judgment that its rival's patents were invalid and not infringed. Burst filed a countersuit in April 2006.

The court battle followed a breakdown in licensing negotiations between the parties. Burst approached Apple in late 2004, informing the company that its iPod, iTunes and QuickTime infringed Burst’s patents.

Burst was founded in 1988 under the name Instant Video Technologies Inc. The patents in the suit were issued to Lang between 1990 and 1999.

Attorneys representing Burst were not immediately available for comment Friday.

The patents referred to in Apple's amended answer and counterclaim are U.S. Patent Numbers 4,963,995; 5,057,932; 5,164,839; 5,995,705 and 4,506,387.

Apple is represented in the case by Weil Gotshal & Manges LLP. Burst is represented by Hosie McArthur LLP, Carr & Ferrell LLP, Susman Godfrey LLP and Heim, Payne & Chorush LLP.

The case is Apple Computer Inc. v. Burst.com Inc., case number 3:06-cv-00019-mhp, in the U.S. District Court for the Northern District of California.

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My appologies to any here invested in BRST...