Ruling just in on Engate patent claims

In May 2005 a bench trial was held on the remainder of the defendants' invalidity counterclaim against Engate. The Court's ruling rested heavily on the testimony and evidence presented by NCRA President Merilyn Marquardt-Sanchez, court reporters Richard Dagdigian and Richard Stirewalt, District Court Judge Roger Strand, Stenograph representatives John Wenclawski and Fred Middlebrooks, and programmer Brent Sandstrom. Another important factor proved to be the many examples of prior art NCRA provided to the defendants.

"This is an extremely important victory not only for the defendants, but also for the reporting profession," said NCRA Executive Director and CEO Mark J. Golden, CAE. "We're gratified that the Court has invalidated these claims. But we still have more to do. NCRA will be working with counsel to identify what else needs to be done to protect the interests of our members."

The primary subject addressed at trial was defendants' contention that certain claims of the Engate patents were anticipated by products and processes that were in public use or were disclosed in printed publications prior to the filing of Engate's patent applications on March 24, 1993. In this latest ruling, District Court Judge Matthew Kennelly declared invalid patents relating to searching the realtime transcript and displaying a portion of the text, phonetic translation, and video- and audio-text synchronization. In the initial ruling, the Court invalidated Engate's key patent claims that attempted to cover a realtime feed that allows a lawyer to read, highlight, annotate, navigate, list issues, view transcripts remotely, and perform other critical functions.

In all, the Court declared 21 of the 26 patent claims under consideration invalid. However, the Court upheld five of Engate's patent claims, which appear to be focused on messaging with portions of the transcript attached and automatic issue coding by the computer (issue coding by the attorney was previously declared invalid).

NCRA is currently reviewing the decision with counsel in order to identify the ramifications of the ruling and any necessary next steps. As it has done in the past, NCRA will keep all of its members as informed as possible about the ramifications of the Engate litigation so that individual member reporters can make informed and independent decisions about what actions are in their own and their firm's best interests. NCRA will also continue to help facilitate the defense of those member reporters who have decided to join the Joint Defense Group.

As you may recall, Engate sued Esquire Deposition Services and Atkinson-Baker Inc. for infringement of several U.S. patents issued to Engate covering certain functions that can be used by court reporters and attorneys to enhance the utility of realtime transcription. Esquire and Atkinson-Baker counterclaimed for a declaratory judgment of invalidity of certain patent claims. In a series of rulings, the Court found in favor of the defendants on Engate's claims of infringement.

Initially, the Court was not planning on ruling on the issue of invalidity. However, an amicus curiae brief submitted by NCRA in support of the defendants helped to convince the court to examine the validity of the patent claims. The Court thereafter partially granted the defendants' motion for summary judgment on their invalidity counterclaim, finding invalid 10 claims on July 30, 2004.