A computer software development/software licensing expert witness advises on case involving a software designer who claims that a website service infringes on a nutritional information patent. Plaintiff filed several patent infringement actions against companies whose websites it claims used its computerized method and system for nutrition-related behavior analysis, training, and planning. The plaintiff alleges continuing damages from the alleged infringement.
The defendant asserts that the patent was not duly and legally issued and that it is invalid. It claims that the patent holder intentionally withheld from the U.S. Patent and Trademark Office at least one reference material to the patentability of the claims of the patent. Specifically, he was aware of an application for the Palm Pilot hand-held computer. He knew this product was prior art or at least intervening art to be disclosed, the defendant asserts.
Additionally, existence of a software program for children that also was prior art was intentionally withheld from the USPTO during both the original prosecution and reexamination of the patent in order to obtain claims directed at this exact subject matter, the defendant says. The original prosecution history of the patent is devoid of any office action. Had the creator made the USPTO aware of the reference, it would have likely formed the basis of a rejection. Such an office action would likely have led to at least a narrowing of claim scope, or abandonment of the application altogether, obviating the instant litigation, the defendant argues.