File:DVD rental machine.jpg

A Redbox kiosk in Indianapolis. ( Valerie Everett , via Wikimedia Commons .)

The ongoing patent suit between Redbox and VendoNet reached another turning point on January 8, when the Northern District of Illinois issued a second claim construction order that rejected VendoNet’s motion for reconsideration and also delved deeper into the question of what an “input device” is. The court declined to rule on the underlying question of whether the kind of DVD return slot used in Redbox machines could be an “input device” as claimed in the patent, since that question was not yet ripe.

VendoNet v. Redbox was filed in 2013 , and is currently before Judge Manish S. Shah . Judge Shah is one of the newest and youngest members of the Illinois bench, having been approved unanimously by the Senate just last May. The parties to the case are Redbox , whose little red DVD rental kiosks dot the American landscape, and VendoNet , which holds a 1995 patent on Internet-enabled vending machines.

The patent in suit is USRE43656 , “Vending machine and computer assembly.” The specific claim at issue is Claim 38, which sets out a 7-step process of dispensing a selected good in accordance with user input.

The patent has a complex prosecution history, which has affected the claim construction process. The original patent application was filed in 1995, but the patent in suit is a reissue that was only published in 2012. The litigation is currently at (or now just past) the Markman phase , in which the court determines the meaning of the patent claims as a matter of law.

During the original patent issuance process, the inventors overcame an obviousness rejection by arguing that step 5 of Claim 38 had to be performed by step 7. In this suit, VendoNet has tried to back away from that restriction. But relying on the doctrine of prosecution history estoppel , Judge Shah rejected that argument in September, and has now rejected it again in January. “The argument is unconvincing because the requirement that step 7 follow step 5 comes not from the specification, but from a disclaimer made by the patent applicants during prosecution,” he wrote, and applicants can only rescind such a disclaimer if they make it very clear to the examiner that they are doing so — which in this case they did not do.

The other matter before the court was what an “input device” is. This will be crucial to the ultimate outcome of the case, since whether Redbox is infringing on the patent will depend to a great extent on whether its DVD return slots are “input devices” in the sense of the patent. The court opted to accept both Redbox’s characterization of an input device as “such as selector buttons, a keyboard, a trackball, or some combination of the foregoing,” but also accepting VendoNet’s contention that this list was non-exhaustive.

Markman hearings involve a special kind of dance between the parties. Where infringement is more at issue, the plaintiff will usually argue for a broad reading of the claims, while the defendant argue for a narrower reading to make it less likely that the court will find an infringement. On the other hand, if the parties are more concerned with whether the patent is valid or not, the defendant will argue for a broader reading, in hopes of having the patent tossed out on patentability grounds such as obviousness or anticipation , while the plaintiff will try to narrow the claims.

The dance in this case has involved some of both moves from the parties. In the previous Markman hearing in September, for example, Redbox argued for a broad reading of the kind of things that the vending machine could sell: that it could sell just one thing as well as several different things. VendoNet argued that its patent only covered selling two or more different kinds of things. (Judge Shah adopted Redbox’s reading, which may leave the patent vulnerable to challenge later on.)

And the Markman dance hasn’t been the only dance in this case. Inventor James Satchell of Tuskegee, Alabama is also the founder of the Christian hip-hop group Love@War , and has invited his supporters to do a dance called “The Tuskegee Struggle” in front of Redbox machines to show their support for VendoNet.

It’s not often you see dance used as a tool to gain leverage in a patent suit. But will that dance have any effect on the dance at the negotiating table?

Time alone will tell. But for my part, I think our patent system would be greatly improved by greater use of dance in litigation.

For now, in any case, we can only ponder life’s persistent questions: