Reexamination Amendment Precludes Infringement Liability for Pre-Certificate Period for eBay and Microsoft

Scott Daniels | May 12, 2011

Earlier this week, Judge Claudia Wilken of the Northern District of California granted summary judgment in the DJ/infringement action, eBay, Microsoft v. PartsRiver, Kelora, holding that the patentee could not recover for any acts that occurred before the reexamination certificate issue date, November 2, 2010. 

The patent-in-suit, U.S. Patent No. 6,275,821, claims a method for sorting search results obtained with a computer.  The ‘821 patent successfully emerged from reexamination, but only after the claims had been initially rejected and then amended to overcome the rejection.  In their motion for summary judgment, eBay and Microsoft asserted that the reexamination amendment substantively changed the scope of all the ‘821 claims, precluding (under 35 U.S.C. § 252) any liability for acts before the certificate date.  The ‘821 patentee replied that if the original claims were properly construed, they would have the same scope as the claims amended in the reexamination. 

Judge Wilken concluded that the scope of the claims had changed in reexamination.  First, she noted that the ‘821 claims, as amended, recites that the steps are “performed with a server connected to a client computer through a computer network.”  Further, the respective roles of the server and client computer were “delineated” in the amended claims.  But the clincher for the Judge appears to have been the fact that the patentee’s amendment was filed after the examiner’s comment that the key distinctions over the prior art were not recited in the original claims

Judge Wilken’s ruling reminds those filing reexamination requests of the need to address claim construction issues, so that any amendment made by the patentee is perceived in later litigation as a substantive change in claim scope.

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