Developments at the End of October

Scott Daniels | November 1, 2010

1.  Judge Refuses to Consider “Gamesmanship” Remarks in Claim Construction

Last week we reported the Dura Global case in which Judge Cox defined the standard by which a court may determine whether to construe claim terms in light of a patentee’s remarks in a reexamination proceeding.  The patentee’s remarks in the reexamination of the patent in Beneficial v. Blockdot et al., 2:07-cv-263-TJW-CE, clearly failed that standard.

There, the patentee responded to a rejection in the reexamination of the patent-in-suit, stating that there was no disclosure in the cited reference of “‘unrequested’ advertising (e.g., advertising that just appears and is not in response to any immediately previous user input, e.g. a pop-up ad).” A week later, Judge Ward construed the claims.  The accused infringer then requested reconsideration of that claim construction, and Judge Ward changed his construction of “unrequested” to mean “not in response to any immediate previous input by the user,”  relying upon the patentee’s statements in reexamination.

Within two weeks, the patentee filed a second response to the pending rejection, this time stating that “‘unrequested’ means that the advertisement is ‘not in response to any immediate specific request by the user’ for the advertisement” (emphasis in original).  Thus, the patentee sought to require a “specific” user request.  The patentee subsequently asked the court for clarification of his construction of the word “unrequested” in light of this new prosecution history.

Judge Ward was unsparing in his order denying the patentee’s request for clarification.

The Court rejects this attempt by Plaintiff to alter the Court’s construction of “unrequested” by making after-the-fact, self-serving statements to the USPTO in reexamination.  To allow Plaintiff’s argument to succeed would open the door for “gamesmanship” where patentees could take advantage of reexamination to alter the Court’s construction of disputed claim terms after the Court has issued its construction.

Judge Ward added that “to the extent Plaintiff seeks clarity of the Court’s construction, Plaintiff received that clarity from the Court’s previous Order . . . .”

2. Sorenson Request to Lift Stay Denied

Also last week Judge James Ware of the Northern District of California denied Sorenson’s motion to lift a stay that had been issued pending completion of the PTO’s reexamination of U.S. Patent No. 4,935,184.   Judge’s Ware’s refusal to lift the stay is not surprising, since the PTO has issued a final rejection of the ‘184 claims and since, in any event, the ‘184 claims have expired.

What is interesting is that the ‘184 patent has been the subject of more law suits, to this author’s knowledge, than any other U.S. patent.  It claims a method for injection molding “a thin-walled, hollow plastic product,” and has been asserted against processes for making many, many, many commercial products.

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