Ronald A. Katz Technology Licensing v. Earthlink - IP Spotlight

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Thus, the “qualification unit” is not simply another way of describing a component that performs
the algorithm EarthLink identifies. The same is true for the designation unit 96. (See, e.g,. ‘762
patent at 12:59-63.) Moreover, the names of the random number generator 101 and encryptor
102 suggest that these components are not simply defined by the algorithm EarthLink identifies.
Accordingly, this Court finds that the structures that perform the recited functions for the
“credit verification structure” and “acknowledgment number structure” are not general purpose
computers. Therefore, these limitations do not fall under WMS Gaming and no analysis of the
specific algorithms disclosed by the ‘762 patent is necessary to construe these two limitations.
Based on the foregoing, this Court also DENIES EarthLink’s motion for summary judgment with
respect to non-infringement of claim 32 based on those limitations.
6. Doctrine of Equivalents
EarthLink asks this Court to rule that there is no infringement based on the doctrine of
equivalents because Katz failed to make any substantive allegations under this doctrine. During
discovery, Katz failed to argue that there is infringement under the doctrine of equivalents for
claim 11 of the ‘150 patent. With respect to claim 32 of the ‘762 patent, Katz has only provided
boilerplate doctrine of equivalents assertions.
In response, Katz argues that it is premature for the Court to rule on doctrine of
equivalents issues. 8 Katz points out that there are several claim construction issues the Court
must resolve. Until the Court rules on these issues, Katz argues that it cannot formulate positions
under the doctrine of equivalents. Katz also argues that it did not become aware of EarthLink’s
non-infringement positions until after Katz submitted its expert report. Therefore, it could not
provide its contentions under the doctrine of equivalents in its opening expert report.
8 Katz also points out that it identified equivalent structures for each means plus function claim. This evidence goes
to literal infringement and the argument is not helpful.
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