In ex parte reexamination, the percentage of reexaminations concluded with all claims confirmed is roughly 24% based upon USPTO statistics. Confirmation of original claims in patent reexamination (i.e., allowance without amendment) is highly desirable for Patentees to maintain the availability of past damages. This is because changes to patent claims during patent reexamination typically result in intervening rights that effectively foreclose the ability to pursue past damages (i.e., prior to amendment). However, the confirmation statistic only tells part of the story in many instances. A successful reexamination from an infringer’s perspective does not always result in an overt claim change or cancellation. In other words, even where claims are confirmed, statements in the reexamination record that are inconsistent with arguments made in a concurrent litigation, or that rise to the level of an outright disclaimer may provide new, non-infringement positions to infringers. This past week, such a reexamination misstep was analyzed in Beneficial Innovations, Inc. v. AOL, LLC. et al., 2-07-cv-00555 (TXED June 3, 2010, Memorandum Opinion & Order) (Ward, J.). In Beneficial the claims asserted in the district court infringement action (U.S. patents 6,183,366 & 6,712,702) relate to an interactive informational service in which “unrequested” advertising presentations are delivered to a network node. In their Markman briefing, the Patentee asserted that unrequested defined “not requested by the user.” The defendant contended that unrequested defined “not sent in response to a signal from a user’s computer” As can be appreciated, the defendant’s definition would exclude search engine products delivering advertisements in response to a search query (i.e., the alleged infringing products). Of course, the Patentee’s definition would cover the alleged infringing products. Initially, the court sided with the Patentee, that is until the reexamination caused the court to reverse course. In a response filed in the concurrent reexamination (April of 2010), the Patentee distinguished the art by stating: There is no teaching of providing “unrequested” advertising (e.g., advertising that just appears and is not in response to any immediately previous user input, e.g. a pop-up ad). . .(emphasis added) In other words, the Patentee seemed to define the term unrequested in the reexamination consistent with the definition advanced by the defendant in reexamination. The defendant promptly pointed this inconsistency out to the judge. Curiously, rather than mooting the issue by rescinding any perceived disclaimer with a supplemental filing in the reexamination, the Patentee instead chose to argue to the court that the use of “e.g.,” made clear that the statement was only an example. This tactic clearly did not sit well with the judge, backfiring on the Patentee. Not surprisingly, the judge reversed the earlier construction in favor of the defendant. The text of the resulting order is found here. In justifying the reversal, the court cited case law relating to the consideration of reexamination events in district court proceedings. Namely,the court cited, Tesco Corp. v. Weatherford International, Inc., — F.Supp. 2d —, 2010 WL 1443540, *4 (S.D. Tex. 2010); and Proctor & Gamble Co. v. Kraft Foods Global, Inc., 549 F.3d 842, 848 (Fed. Cir. 2008). The court concluded that these cases supported that reexamination proceedings were fair game for guidance in claim construction issues. In Tesco, identification of structure for interpreting a means plus function claim was provided in reexamination and used in the district court proceeding as a form of fact admission, in Proctor & Gamble the court discussed the relevance of confirmed claims in a preliminary injunction analysis. Neither of these cases appeared to apply a statement of an ongoing record as a clear and final disavowal of claim scope. Did I say the judge seemed annoyed? Between the time of the order and the alleged disclaimer statement, the USPTO issued a final rejection of certain claims (also reciting unrequested) but confirmed claim 1. Sadly for the Patentee, the Office confirmed claim 1 on grounds entirely unrelated to the unrequested language. As such, claim 1 currently stands confirmed, but the previous infringement theory appears lost as a result of patent reexamination.