Scott Daniels | November 8, 2012
Reexamination of a patent is normally sought by a prospective infringer who wishes to invalidate the patent or to achieve one of the numerous collateral benefits of reexamination. Occasionally, though, it is the patentee who requests reexamination. Is it possible for a patentee to make such a request for an “improper purpose?” If so, does that improper purpose render the patent unenforceable?
The issue arose Tuesday in Exelis v. Cellco, 2012 U.S. Dist, LEXIS 158842 (D. Del.)). The patent-in-suit had been the subject of an initial patent infringement action that settled, but not before Judge Sleet had construed the claims. After that initial case was dismissed, the patentee Exelis requested reexamination of its claims. Over the course of the reexamination, Exelis amended certain claims, added new claims, and presented arguments distinguishing its claims from the prior art. The reexamination examiner at first rejected the claims, but later allowed them. After the conclusion of the reexamination, Exelis filed a second infringement action, the current case in which Cellco is of accused of infringement.
Cellco raised a series of defenses, in two of them, asserting that Exelis had violated 35 U.S.C. § 305, rendering the patent invalid. Cellco argued that the reexamination had been requested for an “improper purpose,” specifically to “fix” Judge Sleet’s claim construction in the initial infringement action, so that the claims would be construed in the second action in such a manner, that they would be infringed by Cellco. According to Cellco, the patentee “made these amendments in a transparent attempt to avoid [Judge Sleet’s claim construction] and thus boost [its] prospect of a finding of infringement against Defendants.” Cellco therefore moved for summary judgment that there was a violation of § 305.
The statutory provision states in pertinent part:
In any reexamination proceeding under this chapter, the patent owner will be permitted to propose any amendment to his patent and a new claim or claims thereto, in order to distinguish the invention as claimed from the prior art cited under the provisions of section 301 of this title, or in response to a decision adverse to the patentability of a claim of a patent. No proposed amended or new claim enlarging the scope of a claim of the patent will be permitted in a reexamination proceeding under this chapter.
Judge Leonard Stark granted Exelis’ summary judgment motion of no violation of § 305. He did not address the broader question of whether an “improper purpose” could, as a matter of law, render a patent invalid or otherwise unenforceable. Nor did he delve into the specific claim construction points raised by Cellco. Rather, Judge Stark indicated that if there appeared to be a legitimate basis for the patentee to seek reexamination, the enquiry would be at an end and there would be no violation of § 305.
Plaintiff has identified several proper purposes for seeking reexamination and Defendants have not offered any evidence – or, indeed, anything other than suspicion – to counter Plaintiff’s contentions. Plaintiff was entitled to seek reexamination to address prior art asserted in the Samsung Litigation and to correct the typographical errors in the original patent claims.
Judge Stark therefore granted summary judgment in favor of patentee Exelis on the issue.
Judge Stark also granted summary judgment for Exelis on a second § 305 defense asserted by Defendant Cellco, specifically, Cellco’s assertion that Exelis had broadened certain claims during reexamination, contrary to § 305. Judge Stark denied the motion because the parties had not compared the scope of any individual claim against the scope all the claims in the original patent, to determine whether there had been an improper broadening. The Judge explained:
The Manual of Patent Examining Procedure (MPEP) explains that “[a] claim presented in a reexamination proceeding ‘enlarges the scope’ of the claims of the patent being reexamined where the claim is broader than each and every claim of the patent.” MPEP § 2258.III.A (emphasis added). According to the MPEP, the standard used to evaluate a claim presented during reexamination is the same standard that is used to evaluate claims for purposes of reissue. See id. “A claim which has been broadened in a reissue as compared to its scope in the patent is not a broadened reissue claim if it is narrower than, or equal in scope to, any other claim which appears in the patent.“
Judge Stark found this guidance from the MPEP to be persuasive and invited the parties to address the issue again, but by comparing the scope of the individual claims with the scope of all the original claims.