Claim Construction : US PTO Litigation Alert™

APJs’ View of Claim Construction Thwarts Petitioner

Scott Daniels and Cindy Chen | March 21, 2014

A major appeal of ex parte and inter partes reexamination was the high rate at which the Patent Office granted requests and initiated proceedings.  On the other hand, the APJs in recent months are becoming much more discriminating in their consideration of inter partes review petitions, denying a sizeable percentage of such requests for failing to present a complete and convincing argument for unpatentability.

The APJs’ decision denying review this Monday in Pride Solutions v. Not Dead Yet Manufacturing (IPR2013-00627) is a case in point.  The patent claimed a “connect/disconnect coupling for securing a stalk stomper to a tool bar.”  (In case you don’t know, “a stalk stomper” stomps on stubble from harvested crops, reducing the possibility of the stubble damaging tractors, etc.).  The exemplary claim included the limitation of “a retention means on the plate member” for engaging a pin to prevent desirable longitudinal movement of certain component parts.

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The Risks of Inconsistent Arguments in Parallel Proceedings

Scott Daniels | May 3, 2012

A patentee, who is simultaneously pursuing an infringement in District Court and defending its patent in a reexamination proceeding at the PTO, often faces the temptation to construe its claims broadly in court but narrowly at the PTO.  The risks of yielding to that temptation are illustrated in Judge Susan Illston’s claim construction decision Tuesday in Kilopass Technology v. Sidense (2102 U.S. Dist. LEXIS 60973). 

There, in an earlier Markman hearing, the patentee had argued that the terms “column bitline” and “row wordline” (in claims for a semiconductor memory cell) were interchangeable, and further that they should be defined identically as “a line that connects to one terminal of each memory cell in a memory array.”  The effect of the patentee’s proposed claim construction was to overcome: specifically, the fact that the arrangement of the “column bitline” and “row wordline” in the accused semiconductor was precisely opposite the arrangement of those components recited in the asserted claims.  Judge Illston initially construed the claims in favor of the patentee.

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Broadcom Wins Important Victory in Reexamination of its ‘080 GPS Patent

Scott Daniels | March 21, 2012

Broadcom and its subsidiary Global Locate received good news Monday when the PTO Board of Appeals reversed a rejection in the reexamination of Global’s U.S. Patent No. 7,158,080, claiming a method and apparatus for acquiring satellite signals using “long term tracking data” received at a remote receiver.  On the basis of a reexamination request filed by SiRF Technology in 2010, the examiner had rejected the ‘080 claims as being anticipated by and obvious over several prior art references. 

In 2009 the ITC found that the ‘080 patent, along with five other Global patents, were infringed by GPS systems imported by SiRF and others and issued a limited exclusion order against the future importation of infringing systems.  Broadcom and Global later filed an enforcement complaint alleging that SiRF was violating the exclusion order.  Accordingly, the ‘080 patent is clearly of considerable commercial significance.

The Board’s analysis will interest reexamination practitioners because it hinges on the Board’s claim construction.  Specifically, the Board found that the examiner had construed the phrase “long term tracking data” too broadly and that once the phrase was properly construed, the claims in reexamination were patentable over the prior art.  Significantly, the Board relied not only on the ‘080 specification, but also on expert declarations submitted by the ‘080 patentee and the requester.  It is common for the Board to rely upon expert declarations for analyzing the technical meaning of prior art or whether a claim is obvious over prior art, but not so common for it to cite such declarations to support its legal conclusions on claim construction. 

Update on one of the Callaway Golf Ball Patent Reexaminations

  Last Thursday the PTO Board affirmed the rejection of Callaway’s U.S. Patent No. 6,495,633 claiming a “dual core” golf ball (95/000,445).  The request had been filed by Acushnet, whom Callaway has sued for infringing the ‘633 patent. 

PTO Board Reverses Rejection of Claim for being Broadened in Reexamination

Scott Daniels | December 27, 2011

Does the statutory prohibition against broadening the scope of claims in reexamination (see 35 U.S.C. § 314(a); 37 C.F.R. § 1.906) apply on a claim-by-claim basis or to the scope of the claims as a whole?  Put more concretely, may a patentee in reexamination broaden the scope of a dependent claim?  The answer is that the prohibition applies to the scope of the claims as a whole, and a patentee is allowed to broaden its dependent claims.
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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). 

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CAFC Reverses Rejections in Reexamination of 7 of 8 NTP Patents

Scott Daniels | August 2, 2011

NTP won an interim victory with yesterday’s CAFC’s decision to reverse the PTO’s anticipation rejection of seven email system patents in reexamination.  In a separate decision, the CAFC affirmed the PTO’s rejection of an eighth NTP patent, also in reexamination.  These are the patents that were the subject of NTP’s law suit against RIM several years ago, that resulted in a $612.5 million settlement for NTP. 

Essentially, the CAFC found that the PTO’s construction of the claim “electronic mail message” as requiring “the entry of a destination address” only was too broad in view of the claims, the specification and the prosecution history.  The CAFC concluded that a more narrow construction was appropriate: “an electronic mail message must include a destination address and must have the capacity to include an address of an originating processor, message content (such as a text or attachment), and a subject.”  The CAFC therefore remanded the seven patents to the PTO “for further proceedings in accordance with this opinion,” applying this more narrow claim construction.

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Unconcluded Reexamination not Part of Intrinsic Record for Claim Construction

Scott Daniels | July 14, 2011

Judge Marsha Pechman made some interesting comments last week in F5 Networks v. A10 Networks, 2011 U.S. Dist. LEXIS 73689 (W.D. Wash.), regarding the use of the PTO’s reexamination records to construe claims.  F5 had sued A10 for infringing four patents.  A10 defended, in part, by requesting reexamination of the F5 patents.  The examiner, however, denied each of A10’s requests. A10 petitioned the PTO to overturn the denials, alleging that the examiner had “ignore[d] the prosecution history, applied[d] the wrong legal standard, mischaracterize[d] the cited art, and adopt[ed] a claim construction that is significantly narrower than the construction asserted by the Patent Owner.”  That petition is now pending.

In the meantime, A10 argued that Judge Peckham should consider the examiner’s treatment of the reexamination requests in her construction of F5’s claims – presumably, A10 believes that F5 is pressing for a broader claim construction in the infringement case than was used by the examiner to deny the reexamination requests. 

In response to A10’s argument, the Judge carefully analyzed the use of reexamination records in subsequent infringement cases.  She indicated that comments in reexamination by both the patentee and the examiner may be treated as intrinsic evidence.  Although “the majority of the cases where courts have admitted evidence of reexamination proceedings have concerned the statements or arguments of patentees which have then been used by district courts to construe disputed claims,” there are also “instances where the patent reexaminer’s construction has been considered part of the prosecution history.”  She explained that “[b]ecause an examiner in reexamination can be considered one of ordinary skill in the art, his construction of the asserted claims carries significant weight.”

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Judge Jordan Invalidates Reexamined Claims For Lack of Written Description

Scott Daniels | July 7, 2011

Any judicial opinion that contains the word “chutzpah” is certain to contain some points of interest, at least for those not mentioned in the opinion.  So it is in the case of Judge Kent Jordan’s grant of summary determination of invalidity in Stored Value Solutions v. Card Activation Technologies, 2011 U.S. Dist. LEXIS 71330 (D. Del., July 1, 2011).  Stored Value (SVS) had sued Card Activation (CAT) for declaratory judgment that the latter’s U.S. Patent No. 6,032,859 was invalid over the prior art.  The ‘859 patent claims a method for processing electronic transactions that involve an ATM card, prepaid debit card, or phone card. 

Before the court was SVS’s motion for summary judgment that the ‘859 patent was invalid over certain prior art references.  Both parties must have been surprised when the Judge granted summary that the ‘859 claims were invalid for failure of the specification to provide written description support.

Judge Jordan pointed to an earlier reexamination of the ‘859 patent where claims 20 and 29 – that recited an initial step of “entering an authorization code” and a later step of “entering confirmation of the sales transaction data by a customer” – were rejected over a prior art reference.  CAT traversed the rejection by amending claims 20 and 29 to recite two sub-steps from dependent claims 21 and 32, specifically, the two sub-steps constituting the initial step of “entering an authorization code” already recited in claims 20 and 29.  These were the sub-steps of “entering the clerk authorization code” and “entering the customer authorization code.”  Judge Jordan complained that:

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“Broadest Reasonable Claim Construction” in Reexamination: Does it really Matter?

Scott Daniels | June 14, 2011

Lawyers promoting reexamination often assert as one of its principal advantages the fact that the PTO gives claims their “broadest reasonable construction” consistent with the specification, whereas courts follow the CAFC’s 2005 Phillips Decision and construe claims more narrowly.  The point for accused infringers is that claims construed broadly in reexamination are more likely to be found invalid over the prior art than are claims construed narrowly in the courts.

This difference in claim construction is certainly a clear theoretical distinction between reexamination and patent litigation, but what is the practical result of this theoretical distinction?  Each reexamination lawyer is likely to have a different answer, usually based on anecdote, not statistics.  My personal answer is that despite the different standards, there is usually no difference in how the claims are construed or in the outcome of the validity issue.

And my anecdote is the PTO Board decision Friday, Ex parte Lacks Industries (90/009,422).  There, Lacks Industries had sued Hayes Wheel Int’l and another company for infringement of U.S. Patent No. 5,597,213.  Hayes replied by requesting reexamination of the ‘213 patent, and the trial judge stayed the litigation pending completion of the reexamination.  Thus, reexamination would have a decisive, or at least significant, impact on the outcome of the dispute.  And, as will be seen, claim construction would have a major effect on the reexamination.

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