Patentee’s Recent Remarks in Reexamination do not Affect Claim Construction

Scott Daniels | January 28, 2011

 It is commonly held that a patentee’s remarks made during reexamination, like applicant’s remarks made during original prosecution, are relevant to a court’s construction of the claims.  There are exceptions, however, such as where the patentee’s remarks are not directly related to pending rejections.  (See post of October 28, 2010).  Thus, a patentee’s remarks in reexamination, that do not appear to be necessitated by the examiner’s rejections, are suspect as being self-serving.

 Another exception to the general rule occurred this Monday in Mondis Technology, Ltd. v. Hon Hai Precision Ind., 2011 U.S. Dist. LEXIS 7140, where the patentee supported its interpretation of several claim terms by citing its own remarks in a pending reexamination proceeding. 

Magistrate Judge Charles Everingham IV was not impressed.  In one instance, he stated somewhat cryptically that it “is worth mentioning, however, that [the patentee’s remark] was made during reexamination on June 18, 2010, which was merely a few months before Plaintiff filed its initial claim construction brief.”  He then rejected the patentee’s proposed claim construction.  In another instance, Magistrate Judge Everingham was more expansive: “Plaintiff’s argument that the applicant acted as his own lexicographer is without merit.  The statements to which Plaintiff refers were made in reexamination merely months before Plaintiff filed its claim construction brief – thus, they should be given little, if any, weight.”

Clearly, the Judge suspected that the patentee’s remarks in reexamination were litigation-driven and may not have reflected a sincere understanding of the claim terms in question.

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