Featured Posts
- Facebook Loses Reexaminations of Pragmatus’ Patents
- How is Reexamination Treating Round Rock Research?
- Reexamination has not Saved Apple against MobileMedia Patents, So Far
- What is an “Involved Application” in IPR Practice?
- Apple Victorious over Affinity Labs of Texas’ Portable Audio Player Patent
- Think IP Strategy Offers 2011 News Almanac
- An Update on Oracle’s Infringement Case against Google
- PTO Requests Public Comment on Proposed Rules for AIA Post-Issuance Proceedings
- Microsoft-i4i, Oracle-Google & VirnetX-Apple-Cisco Updates
- Oracle Patent to Emerge from Reexamination
- VirnetX again Sues for Infringement, and again Faces Reexaminations
- How Strong are Google’s Requests for Reexamination of the Lodsys Patents?
- PTO Board Sides with NVIDIA on Two Rambus “Barth I” Patents
- Oracle ‘520 Moves toward Confirmation in Reexamination
- Google Gets Mixed Result against Oracle’s Seventh Patent
- Did Google Request Reexamination of Lodsys Patents?
- Two Updates
- Oracle v. Google Android® Update
- Rambus Wins Limited Exclusion Order at ITC against NVIDIA, despite Pending Reexaminations
- 最初が肝心：不備のない再審査請求書を作成するために
- That’s My Patent You’re Reexamining…
- “Why Wait for Oppositions?” by Scott Daniels, 47 IDEA 343 (Law Review of Franklin Pierce Law School)
- The Basics
Noteworthy Links
- "The Interplay between Reexaminations, Preliminary Injunctions and Stays of Litigation" - by Dennis Crouch at PATENTLYO.COM
Favorite Patent Blogs
- All Things Pros
- CAFC Alert
- FDA Law Blog
- IPWatchdog
- Patent Docs
- Patently-O
- PLI Patent Law Practice Center
- Think IP Strategy
- US Patent Post-Grant Opposition
Recent Requests
PTO Statistics
Reexamination Amendment Precludes Infringement Liability for Pre-Certificate Period for eBay and Microsoft
| 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.
Judge Wilken concluded that the scope of the claims had changed in reexamination. First, she noted that the ‘821 claims, as amended, recites that the steps are “performed with a server connected to a client computer through a computer network.” Further, the respective roles of the server and client computer were “delineated” in the amended claims. But the clincher for the Judge appears to have been the fact that the patentee’s amendment was filed after the examiner’s comment that the key distinctions over the prior art were not recited in the original claims.
Judge Wilken’s ruling reminds those filing reexamination requests of the need to address claim construction issues, so that any amendment made by the patentee is perceived in later litigation as a substantive change in claim scope.
