Sorenson ‘184 Patent Claims might be subject to Intervening Rights

| December 28, 2011

Over the years, Jens Erik Sorenson has sued so many companies for infringement of his cyclic injection molding patent, U.S. Patent No. 4,935,184, that it might be the most well-known patent of the 20th Century.  Although it expired several years ago, a number of infringement actions continue, including the consolidated case Sorenson v. Emerson Electric et al., 08-cv-60 (S.D. Cal.). 

 There, Defendants Emerson, Ryobi and Rally Mfg. recently moved for summary judgment that they were entitled to absolute intervening rights because of arguments made by Sorenson in reexamination, effectively amending the claims.  Judge Barry Ted Moskowitz has initially denied the intervening rights motion, but he also states that he will reconsider it once he has conducted a Markman claim construction hearing at the end of February.

             The following considerations appear in the ‘184 reexamination file:

(1)   claim 1, the only independent claim of the ‘184 patent, recites a “method of cyclic injection molding a thin-walled hollow, plastic product having a closed end and an open end with laminated walls terminating in a rim at the open end . . . .” Thus, all embodiments of the patented invention must contain “laminated walls.”

 (2)   Sorensen asserted in the reexamination proceedings that “laminated walls” should be defined as “substantially coextensive layers in [a] face-to-face contacting relationship that cover and spread over one another” (the so-called “layers definition”).

 (3)   The examiner initially adopted this definition in his first, non-final rejection. This definition is consistent with Figures 2A and 2B of the ‘184 patent.

 (4)   In the second, non-final rejection, the examiner found that the “layers definition” is not broad enough to cover the embodiments disclosed in Figs. 4 and 5 and recited in claims 2 and 4.

 (5)   Therefore, the examiner broadened the definition of “laminated” to encompass edge-to-edge abutment, stating that “for an object to be ‘laminated’ it must be composed of substantially coextensive parts in [a] face-to-face contacting relationship” (the so-called “edges definition”).

 (6)   The examiner concluded that the “edges definition” enabled dependent Claims 2 and 4 (as supposedly illustrated in Figs. 4 and 5) to contain “laminated walls,” and thereby to fit within the scope of independent claim 1.  The examiner maintained the “edges definition” in his final rejection.

 (7)   After the examiner applied the “edges” definition to all instances of the phrase “laminated walls,” and thereby rejected all the claims as anticipated, Sorenson canceled claims 2 and 4, allowing the examiner to change the definition of “laminated walls” from the “edges” definition back to the “layers definition,” and thereby to eliminate six of the nine prior art rejections contained in the final rejection.

 Will Judge Moskowitz find that Sorenson’s arguments have effectively changed the ‘184 claims by its arguments?  If so, damages for any acts of infringement occurring before the conclusion of the reexamination would be erased.

 

Category: Intervening Rights

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