Court Finds Claim Construction in Reexamination at PTO to be “Merely One Factor” in Determining Claim Meaning

Scott Daniels | December 20, 2010

Judge Ralph Erickson of the District Court of North Dakota was presented in Alien Technology Corp. vs. Intermec, Inc. with an unusual request: the patentee asked him to reconsider a two-year old summary judgment of non-infringement that had been based on a narrow claim construction, in light of a recent PTO reexamination certificate affirming the patentability of most of the claims, based on a broad claim construction.  The patentee characterized the reexamination certificate as “new evidence” and asked the Judge to “’harmonize’ the Court’s rulings with the USPTO’s findings.” 

The patentee’s motion was immensely complicated by the fact that Judge Erickson and the accused infringer had not been previously informed of the pending reexamination.  The Judge therefore denied the motion, finding that the reexamination was not new evidence, and that the patentee had “demonstrated a lack of diligence and candor” by “covertly participating in the reexamination process before the USPTO…”  The Judge then listed the occasions over the course of the case when the patentee might have informed the Court of the reexamination, but failed to do so. 

Even without this complication, however, Judge Erickson indicated that he would not have granted the motion.  The Judge explained his understanding that whereas the PTO is required to give claims their broadest reasonable construction, courts must give claims their “correct construction.”  The PTO’s “construction is merely one factor to be considered in the court’s determination.”  The Judge concluded, with a hint of tartness, that “’findings’ of the USPTO do not constitute persuasive and binding evidence of the meaning of the disputed terms warranting amendment of reversal of the” earlier claim construction and summary judgment orders. 

Hindsight is 20-20, and it is difficult for those not involved in a particular case to appreciate fully its unique complexities.  Still, it might have been better for the patentee to have brought the reexamination to the Court’s attention sooner.  Also, it is a little surprising in this Age of PAIR that the accused infringer was unaware of the reexamination.

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