Markman Order Finds Two Independent Claims Invalid


A Texas federal judge on Thursday substantially pared a case against SkyBitz, Inc. and ORBCOMM, Inc. in a patent infringement suit over tracking and logistics systems, finding two independent claims invalid for failing to meet the definiteness requirements.

Two days after hearing oral arguments from counsel, U.S. District Judge Rodney Gilstrap released a 47-page opinion finding as a matter of law that independent claims 15 and 48 of U.S. Patent No. 6,611,686 were indefinite as they fail to particularly point out and distinctly claim the subject matter regarded as the invention. The judge agreed with SkyBitz and ORBCOMM’s contention that claims 15 and 48 of the ‘686 patent do not contain an obvious error warranting judicial correction and are therefore indefinite for lack of antecedent basis. “[T]he Court finds that Defendant SkyBitz and the ORBCOMM defendants have met their burden and shown by clear and convincing evidence that the claims, when read in light of the intrinsic evidence, fail to inform with reasonable certainty, those skilled in the art about the scope of the invention,” Judge Gilstrap said.

Plaintiff Joseph Smith filed suits against SkyBitz and ORBCOMM in July 2014. The actions were consolidated in August 2015.

SkyBitz is represented by Jennifer Doan, Josh Thane, and Christy Hawkins of HALTOM & DOAN and James Hanrath and Mike Femal of Much Shelist, P.C.

ORBCOMM is represented by Michael Smith of Seibman, Burg, Phillips, & Smith; Herb Kerner of Horizon Patent Group, LLC; and Robert Klinck of Klinck LLC.

Joseph Smith is represented by David Anderson and Julie Cunningham of Anderson & Cunningham, P.C.

To view more coverage, click here.