When can the Patentee use the Reexamination Prosecution History for Arguing Claim Construction?

Scott Daniels | October 28, 2010

Accused infringers in District Court and ITC litigation often rely upon remarks made in the prosecution history of reexamination proceedings to argue for favorable construction of the claims in dispute.  But can a patentee rely upon its own remarks from the reexamination history?  The answer – according to Judge Sean F. Cox of the Eastern District of Michigan – depends on whether the patentee’s remarks in the reexamination were made for the purpose of affecting the litigation.

This Tuesday in Dura Global v. Magna Donnelly, Judge Cox issued a Markman ruling construing patent claims that were the subject of pending reexamination proceedings.  Dura had filed a complaint against Magna in 2007 accusing it of infringing two patents for power slidable rear windows in cars.  Magna later requested reexamination of the two patents.

The claims of the first Dura patent recited the limitation that the rear window includes a cable directional block with a “curved internal passageway.”  Defendant Magna construed the limitation to mean “serpentine in shape (S-shaped),” whereas Plaintiff Dura argued for a broader construction that would additionally encompass pulleys.  Presumably, Magna’s accused window included a pulley.

During the reexamination of its first patent, Dura traversed a prior art rejection, stating in part that “[w]hile the required cable directional block(s) [in the claimed invention] can include pulleys, [the prior art reference’s] conduit-less system does not provide at least one of the advantages of the illustrated embodiments” of Dura’s first patent (emphasis added).  Judge Cox found that by “this statement, Dura is making clear in the reexamination proceeding that pulleys can fall within the scope of a cable directional block with a curved internal passageway.”  In other words, Dura had acknowledged that the prior art pulley satisfied the “serpentine in shape (S-shaped)” limitation, and had tried to distinguish the prior art reference on the basis of other claim limitations.

At the Markman hearing, Magna argued that Dura’s prosecution remarks were self-serving and therefore entitled to little or no weight in construing the claims.  Judge Cox disagreed, finding that Dura’s remarks were relevant to a pending prior art rejection and do “not appear to be a blatant attempt to affect these claim construction proceedings.”  Dura’s remarks might be self-serving in that they sought to overcome a prior art rejection, but not “self-serving in the sense of being directed at affecting this litigation.”

Judge Cox drew the opposite conclusion with respect to Dura’s remarks in the reexamination of its second patent.  There, Dura and Magna disputed the meaning of the claim limitation of “opposed flanges.”  In support of its interpretation, Dura cited a statement that it had made in the reexamination of the second patent, a statement purporting to “clarify” the meaning of the limitation.  This time, Judge Cox found that “Dura’s statement was directed at affecting this litigation” because there was no pending prior art rejection of the claim.  The only pending issue was the examiner’s objection to typographical errors.  Thus, Dura’s clarification was not relevant to the reexamination and therefore likely intended to affect the litigation.  According, Judge Cox gave no weight to Dura’s remarks regarding the flange limitation recited in its second patent.

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