August 7, 2009 - Chicago – Brinks Hofer Gilson & Lione, one of the largest intellectual property law firms in the United States, announced that a court has granted a motion for summary judgment resolving a patent infringement case brought by Encyclopaedia Britannica (EB). The court ruled in favor of Brinks clients, Alpine Electronics of America, Inc. and Alpine Electronics, Inc., finding that EB’s patents at issue are invalid. Alpine Electronics of America and Alpine Electronics are the manufacturers of high performance mobile electronics, including mobile navigational products.

“This closes the book on Encyclopaedia Britannica’s attempt to enforce these patents,” said Alpine lawyer Gary M. Ropski, who is also the president of the firm. “We are very pleased to have accomplished this result in a cost-effective manner without discovery expenses, because the judge agreed to stay all proceedings pending resolution of this motion.”

In 2008, Brinks Hofer Gilson & Lione had successfully persuaded Judge Lee Yeakel of the U.S. District Court for the Western District of Texas Austin Division to find EB’s parent ‘671 patent, relating to searching encyclopedias stored on computers, invalid for indefiniteness. EB then brought suit alleging patent infringement of two related or continuation patents, ‘018 and ‘437. The Brinks litigation team argued that the continuation patents were not entitled to the patent application filing date of the parent ‘671 patent because there had been a break in copendency -- how patents are administratively processed when related patents are before the U.S. Patent and Trademark Office (USPTO) at the same time.

Without the ‘671 application filing date, the continuation patents were invalidated by EB’s own previously published foreign application which is substantially similar to the patents-in-suit.

By way of background, in 1989, EB filed an application for a patent that was issued in 1993. That same year, however, in a rare action by the Commissioner of the USPTO, a reexamination of EB’s patent was commenced because the Commissioner considered the patent to be too broad. Then, in 2002, after more than eight years of reexamining the patent, the USPTO issued a reexamination certificate that narrowed the scope of the ’671 patent. In 2005, EB asserted that their reexamined ’671 patent was infringed by Alpine and its co-defendants, all of which manufacture navigation devices. Last year’s decision of invalidity of the ’671 patent gave Brinks a victory for its clients in that case.

With this final judgment invalidating the continuation patents, each of the asserted patents has been invalidated. However, EB is appealing the first judgment and will likely appeal the second judgment as well.

The Brinks attorneys representing Alpine in this matter are Gary M. Ropski, Laura Beth Miller, Christopher A. Harkins and Andrea L. Evensen.

Patents-in-suit are U.S. Patents 7,051,018 and 7,082,437.