Apple will not Face Trial on MobileMedia Claims Amended in Reexamination

Scott Daniels | November 19, 2012

MobileMedia Ideas’ infringement action against Apple was pared back a bit this week, when Judge Sue Robinson ruled that she would not permit certain claims of U.S. Patent No. 6,427,078 to go to trial.  The ‘078 patent – that claims a camera-cell phone with “a means for transmitting image information processed by said processing unit to another location using a radio frequency channel” – emerged from reexamination in September.  The Patent Office determined that the claims were valid over the prior art, but only after MobileMedia had made a substantial number of changes to claim 1 and therefore to claims 2 and 3 that depend on claim 1.

Citing these amendments, Apple asserted that it would be unfair for MobileMedia to assert claims 1-3 of the ‘078 patent at trial, and moved to exclude them.  Judge Robinson granted Apple’s motion.

The Judge began her analysis by analogizing Apple’s “fairness” issue to an assertion of intervening rights where the patentee has amended its claims in reexamination or reissue.

In determining whether, for purposes of infringement damages, reexamined claims are legally identical to their original counterpart, the Federal Circuit has looked at whether the reexamined claims are “without substantive change.”  [Citations omitted] Claims amended during reexamination are not deemed to be per se substantively changed; instead, “it is necessary to analyze the claims of the original and the reexamined patents in light of the particular facts, including the prior art, the prosecution history, other claims, and any other pertinent information.”

The Judge explained that she found “this standard instructive for determining whether the reexamined claims should be excluded at trial.”  Turning to MobileMedia’s claim amendments, she found them to be substantial, not only changing the scope of original claim 1, but also making claim 1 quite different from the other ‘078 claims in the case.

Judge Robinson therefore ruled that since “neither party has had the opportunity to offer infringement or invalidity opinions on the reexamined claims, proceeding with the reexamined claims at this stage may open the door to new infringement theories and opinions at trial that have not been vetted through discovery.”  Also, “Apple would be unduly prejudiced if the reexamined claims were to be substituted at this stage of litigation.”  For example, “Apple has not had the opportunity to identify prior art that might anticipate claim 1, as amended.”  In fact, “Apple framed its invalidity defenses for the ‘078 patent in light of the original claims.”

The message for practitioners is that even where the patentee’s primary litigation goal is injunctive relief rather than damages, and where intervening rights is therefore not an issue, claim amendments in reexamination can have a major effect.

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