Judge’s Mind not Changed by Reexamination Outcome

Scott Daniels | August 18, 2011

Tuesday’s decision in TDM America v. United States 2011 U.S. Claims LEXIS 1717 has some interesting insights into how trial judges look at reexamination proceedings.  TDM had sued the United States for infringement of two patents.  Court of Federal Claims Judge Thomas Wheeler construed the claims and, on the basis of that construction, granted summary judgment of non-infringement.  TDM subsequently moved for “relief from judgment,” asking Judge Wheeler to reconsider his claim construction in view of the examiners’ claim construction in reexaminations of the two patents that had concluded after the summary judgment grant. Essentially, TDM argued that the reexamination record constituted new evidence. 

For a number of reasons, Judge Wheeler was not impressed by TDM’s motion.  On the substance of the infringement issue, he took a “practicing the prior art” view, finding that the accused process was the same as a prior art process and therefore could not infringe.

Central to the Court’s analysis is the fact that the [prior art] Chemfix II process described in the PTO’s ex parte reexamination is very similar to the [accused] Clean Earth and OENJ processes challenged in TDM’s infringement suit.  In reaching its decision that the ‘614 and ‘862 patents are valid, the PTO’s examiners ruled that the alleged prior art of the Chemfix II process is different from the process described in the patents.  As repeatedly shown in the PTO’s 1,226-page record, the Chemfix II process is continuous, and therefore does not “accumulate a batch” in the mixer or perform any “weighing” in the mixer. These Chemfix II characteristics are the same as the Clean Earth and OENJ processes, and the reason that the Court found no infringement of TDM’s patents.  (Emphasis added). 

In evaluating the reexamination examiners’ comments on the meaning of the claims, Judge Wheeler distinguished between comments made at the earlier stages and those made at the end

PTO’s examiners made many observations about the Chemfix II process and the validity of the ‘614 and ‘862 patents, but in reversing course during the proceedings, the earlier examiner observations are not consistent with the later observations.  Thus, in evaluating any of the PTO examiner statements, it is important to know when the statements were made.  In its motion for relief from judgment, TDM habitually cites to many of the earlier examiner comments, which were later reversed and thus carry no weight.  The final PTO position is consistent with the Court’s position, and would not cause the Court to alter the outcome of the case.  (Emphasis added).

The Judge also scolded TDM for making contradictory statements in the infringement action and the reexamination, at least implying that TDM could be estopped from asserting a broad claim construction in its infringement claim.

The Court also cannot embrace TDM’s position because of the contradictory arguments of TDM’s counsel before this Court and the PTO examiners.  In arguing for patent infringement before this Court, TDM asserted a broad construction of the terms “accumulating a batch” and “weighing” to show that the [accused] Clean Earth and OENJ continuous processes infringed upon TDM’s ‘614 and ‘862 patents.  However, in order to preserve the validity of the patents in the PTO’s ex parte reexamination process, TDM vigorously argued just the opposite, that “accumulating a batch” and “weighing” had much more restrictive meanings.  During the PTO reexamination, TDM had to show that the prior art of the continuous  [prior art] Chemfix II process was different from the ‘614 and ‘862 patents.  (Emphasis added).

Finally, Judge Wheeler suggested that ex parte reexaminations are entirely reliable because the requester does not participate:

the Court is not enamored with the less than robust procedures followed by the PTO in ex parte reexaminations.  After the party requesting reexamination files a reply brief [to the patent owner’s statement], the requesting party has no further participation in the reexamination proceedings. See 37 C.F.R. 1.550(g) (“The active participation of the ex parte reexamination requester ends with the reply . . . and no further submissions on behalf of the reexamination requester will be acknowledged or considered.”).  Thus, after December 8, 2009, when the requester filed its reply brief, only TDM and its counsel had interaction with the PTO’s examiners. Not surprisingly, the PTO reversed course after these interactions with TDM to confirm the validity of the ‘614 and ‘862 patents. (Emphasis added). 

The Judge seemed to be saying that he could not rely on the reexamination because it was not a fair fight without the requester.

Judge Wheeler therefore denied TDM’s motion for relief from judgment and the case goes to the CAFC.






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