Intervening Rights : US PTO Litigation Alert™

HTC Claims Intervening Rights against Apple in ITC Case

Scott Daniels | October 25, 2011

HTC might be making a comeback in the ITC’s investigation of mobile communication devices  (337-TA-710).  In July Administrative Law Judge Charneski issued an Initial Determination (ID) against HTC, finding that its accused communication devices infringe two data manipulation patents owned by Apple.  That determination, if affirmed by the full Commission, would likely result in exclusion from entry into the United States of HTC’s infringing devices.

But in September the full Commission announced that it was reviewing Judge Charneski’s ID against HTC.  And, in a step that will interest reexamination practitioners, HTC asked the ITC for a determination that it does not infringe one of the Apple patents – U.S. Patent No. 5,946,647 – because HTC is entitled to “absolute intervening rights” created in a co-pending reexamination of Apple’s ‘647 patent. 

Last October HTC asked the PTO to reexamine the ‘647 patent in light of certain newly discovered prior art.  The PTO granted the reexamination request and later rejected certain of the ‘647 claims.  Apple replied to the rejection by distinguishing its claims over the prior art, but did not amend its claims.  Specifically, Apple argued that its claimed step of “linking at least one action [computer subroutine] to the detected structure” requires linking “directly to the detected structure” (emphasis added). This argument, according to HTC, contrasts with Apple’s infringement arguments at the ITC that the action (computer subroutine) merely be associated with the detected structure. 

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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. 

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