The legal dispute in Information Images, LLC v. PGA Tour, Inc., revolves around alleged patent infringement related to the capture and distribution of golf tournament data, specifically examining PGA Tour’s potential liability under 35 U.S. Code § 271(a).
Information Images’ patented system comprises three components: a first portable data input device, a second portable device for patrons using a wireless network, and a production module processing and distributing data upon request. The conflict centers on ShotLink, PGA Tour’s proprietary technology for capturing and analyzing golf shot data. The system utilizes various equipment and personnel to gather data, including ball path, flight speed, and final location.
The legal dispute concerns the PGA Tour’s control over the second component of Information Images’ patent for patrons’ secondary portable devices. While ShotLink is not publicly accessible, TOURCast, a PGA Tour platform, provides public access on their website and mobile app. Information Images alleges PGA Tour’s integrates the infringing ShotLink method and system for public use, enabling users to view data on their devices. However, the court sided with PGA Tour, citing a lack of direct patent infringement due to PGA’s limited control over user actions.
Direct infringement occurs when a single entity completes all steps of a claimed method, necessitating PGA Tour to perform all actions in gathering, processing, and distributing golf tournament data via a wireless network. On the other hand, divided infringement, also known as joint infringement, involves multiple actors participating in method steps, with their actions collectively causing infringement, holding one entity responsible.
Information Images sought to prove infringement using this joint doctrine, arguing that multiple entities involved in PGA Tour events collectively perform the patented method’s steps. To prove this, they had to demonstrate four key elements: agreement among members, a common purpose, a shared financial interest, and equal control rights.
The Akamai V Test for Method Claims
Direct infringement of the method claims is divided between PGA Tour and its customers because customers control their online access to Shotlink technology.
In Akamai V, the court clarified that direct infringement can still occur when multiple parties collectively perform all the steps of a patented method if one party exercises “control or direction” over the entire process, and the other parties are contractually obligated to perform their respective steps.
The Akamai V test consists of two essential prongs:
- Benefit and Activity Linkage: The first prong evaluates whether the entity conditions the receipt of a benefit on the customer’s performance of method steps.
- Control Over Manner and Timing: The second prong examines whether the entity controls the manner or timing of the customer’s performance of those method steps, scrutinizing the extent of influence over customer utilization of its services.
The crucial issue here is defining the relevant activity in prong one. Neither party’s description of the relevant activity aligned accurately with the Court’s analysis. PGA characterized it broadly as “obtaining golf tournament data,” while Information Images defines it more narrowly as “displaying data based on user inquiries.” The Court found PGA Tour’s description closer to the issue, determining that the relevant activity is “displaying graphical representations of ShotLink data on a portable device.”
Regarding the benefit provided, Information Images claimed it’s “free access to real-time golf information,” while PGA asserts it’s “getting information without watching the actual event.” The court disagreed with both, stating that the primary benefit is accessing ShotLink golf data on a portable device, whether real-time or historical.
Unlike Travel Sentry, where specific actions were required to access the defendant’s product or service, third parties can access PGA Tour’s golf tournament data and its benefits without having to perform the patented method steps. PGA does not condition access on using a second portable device for data inquiries. Rather, other options exist like watching TV broadcasts or using their website homepage for golf updates.
In terms of the second portable device control, Information Images argued that PGA Tour, as the controlling party of the ShotLink/TOURCast system, which encompasses the patron’s portable connection, is liable for inducing infringement. Conversely, PGA Tour maintained that it lacked control over these devices, as patrons independently initiate data requests and input on their own devices. As such, Information Images failed to prove prong one of the Akamai V test, which requires PGA to link benefits to customer performance of method steps.
Even upon examining the second prong of the test, the court’s determination remains unchanged. The PGA Tour’s licensing agreement does not impose any obligation or provide guidance for users to perform actions specified in the patent claims. Consequently, there is no basis for infringement.
The Centillion Precedent for System Claims
PGA Tour also argued that it cannot be held liable for infringement of the “second portable device” in the accused system. Information Images defined this device as a smartphone, laptop, or similar tool that the public uses to access ShotLink data either through PGA Tour’s website or mobile app. According to PGA, it’s the individual members of the public who activate and use this device, not PGA Tour itself.
The Centillion precedent provides valuable insights into system claims and the definition of “use” in patent infringement. To establish infringement, it is imperative that a party “uses” each and every element of the claimed system. However, this “use” should not be confused with “control.”
In the Centillion case, the accused entity, Qwest, operated the back-end components of the system, but it did not exercise direct control over its customers’ front-end components, typically their personal computers. While Qwest provided software and technical assistance, the critical factor was that the decision to install and operate the software on personal computers remained with the customers. Consequently, Qwest was found not to have “used” the entire claimed system.
In this instant case, the court needed to determine which entities were responsible for executing the system’s steps. The Centillion precedent crucially stipulates that direct infringement necessitates a single entity “using” every element of the system, implying that if PGA Tour did not perform all the patented system’s steps, it could escape liability.
The court found that the patented system here requires a “second portable device” that “selectively display[s] current statistics pertaining to the selected hole and graphical representations of the transmitted input data according to an input from the patron.” PGA TOUR contends that it is not responsible for the “selectively displaying” step, asserting that it’s the patrons themselves who perform this action with their own devices.
Moreover, the Centillion precedent emphasizes the crucial distinction between “use” and “control.” The mere provision of software or infrastructure may not constitute “use” if the accused entity lacks direct control over the relevant system components. In the context of PGA, it was firmly established that patrons had substantial control over their “second portable devices” and determined how they accessed and interacted with data, a factor that significantly influenced the court’s decision.
In summary, the court ruled that despite PGA Tour’s ownership and operation of the back-end components, it did not activate the accused system due to its lack of control over the front-end components managed by golf patrons. PGA Tour couldn’t be deemed in control of the accused system because patrons initiated its operation by requesting service on their personal devices, causing the back-end components, such as the “production module,” to function as intended. As a result, PGA Tour was not considered to have “used” the entire patented system.
This case provides a significant ruling in favor of noninfringement. This decision stemmed from a careful examination, which revealed a clear division of responsibility between PGA Tour and its customers. Drawing upon established Federal Circuit precedents like Travel Sentry and Akamai V, Judge Albright found no basis for joint enterprise or benefit conditioning, which are essential elements for establishing method infringement. A parallel assessment was applied to the system claims, where it was determined that the “second portable device” in question was owned and operated by patrons, not PGA Tour, aligning with the principles outlined in Centillion. This case sets a precedent for future patent disputes by highlighting consumer autonomy and contributing to the ongoing evolution of patent law within the dynamic golf technology industry.
Katelyn Kohler is a second-year law student at Suffolk University in Boston, specializing in Sports & Entertainment, Labor & Employment, and Intellectual Property Law. She holds dual degrees from Ithaca College in Business Administration: Sports Management and Legal Studies. With a passion for these fields, Katelyn is dedicated to pursuing a legal career that combines her love for sports and the law.