As discussed last week, patent reexamination is often leveraged concurrent with district court litigation for strategic purposes. As district court pendencies continue to rise, even in districts known for relatively speedy resolutions, an early filed reexamination will very likely mature in time to provide additional fodder for claim construction. (Markman). In some cases, even where the reexamination concludes favorably to the Patent Holder, the discussion in the reexamination prosecution history may still carry the day.
Last week, a Markman Order was issued in Sigram Schindler Beteiligungsgesellschaft mbH v. Cisco Systems, Inc., Civ. No.09-72-SLR (July 26, 2010) (More info on the Sigram Schindler patent reexamination is found here)
Interestingly, in the Markman Order, Sigram Schindler is called out by the Court for taking inconsistent positions before the USPTO in patent reexamination.
The Markman Order at pages 3-5 explains:
In the copending ‘902 patent reexamination, SSBG has emphasized that the inventors conceived a method for changing over during “ongoing real time data transfers representing a telephone call or similarly time-sensitive communications connections, from a packet-switching network to a line-switching network, without interruption of the end-terminal-to-end-terminal communications connection whose data is being transferred.” . . . . . .
The court rejects SSBG’s contention that the invention has any relevance to the call set-up phase of a telephone call, since there is no real-time problem to address before the conversation begins. Notably, SSBG’s position is in direct contrast to statements made during the reexaminations of the ‘453 and ‘902 patents. On reexamination of the ‘902 patent, SSBG highlighted the inventive feature as “changing over during a real-time, end-terminal-to-end-terminal data transfer, without interruption” of that “end-terminal to end-terminal communications connection whose data is being transferred.” During reexamination of the ‘453 patent, SSBG has specifically told the PTO that the limitation “during the existing transfer” requires the transfer of data to the second end terminal, and
begins to exist in White only after the called station goes off-hook and the Internet virtual connection is completed, col 6:24-26 – because from then on the audio signals received by the first switch from the calling phone (= first end terminal) are transferred to the called phone (= second end terminal) through the Internet. But White nowhere discloses any change-over of a data transfer after this point in time col. 6:24-26, i.e. during the then existing transfer.
During a later interview with the examiner, “[t]he inventor pointed out that the claim limitation ‘during the existing transfer’ as used in the specification, means that a connection to a second end terminal is established.” That SSBG would advocate the opposite construction before this court is perplexing. (emphasis added)
Here, the benefit of a concurrent patent reexamination prosecution is readily apparent.
Another interesting aspect of this case is that the case was stayed for the patents under reexamination as to validity only, claim construction was provided for terms of these patents impacting the infringement case.