EchoStar Seeks to Exploit Examiner Comments in Letter to CAFCA few weeks back, I reported on the second emergence of the TiVo Time Warp Patent (U.S. Patent 6,233,389) from patent reexamination. The time warp patent, as most know, is the subject of a very interesting dispute with Echo Star relating to contempt. (and more importantly, $300 million dollars).With the second reexamination all but concluded (90/009,329) , TiVo informed the CAFC of the development by letter on October 13, 2010. TiVo noted in their communication that the conclusion of the reexamination has no direct bearing on the contempt issue currently before the CAFC. Last Tuesday, EchoStar responded with a letter of their own in which EchoStar (surprise surprise) asserts that the conclusion of the reexamination has everything to do with the issue on appeal. In their letter (here), EchoStar argues that the reexamination creates additional, substantial open issues regarding infringement. EchoStar argues that TiVo has disclaimed claim scope of several key terms. In arriving at this conclusion, EchoStar attempts to seize on certain examiner language provided in the notice of the intent to issue the reexamination certificate (NIRC, 10/6/10).In the NIRC (here), the examiner explained that:Specifically, Patent owner has now clarified and further defined the meaning of the claim terms “transform object”, “source object”, “sink object”, and “automatic[ally] flow control[led]” in light of the understanding of the terms provided in the ‘389 specification. The examiner now interprets these terms in light of Patent owner’s arguments, and as expressly disclosed in the ‘389 specification. (emphasis added)In their letter, Echostar has focused on the language clarified and further defined as an indication that the USPTO somehow relied upon a disclaimer of claim scope to confirm the TiVo patent.While the examiner explained that the supplemental declaration materials filed by TiVo further clarified and refined previously made arguments (i.e., original declarations), this does not necessarily mean that any disclaimer was made. In fact, knowing full well the impact of any statements made during the patent reexamination on the ongoing dispute with EchoStar, it seems very unlikely that such a disclaimer would exist in fact. Likewise, unless clear and unequivocally made by TiVo in their filings, any examiner comments in the NIRC are not binding on TiVo. Salazar v. Proctor & Gamble Company, 414 F3d. 1342 (Fed. Cir 2005)Of course, the ultimate question of whether or not disclaimer exists is not really important to EchoStar, they would just like to derail the appeal and get a remand, or a reversal based on “additional, substantial open issue
A few weeks back, I reported on the second emergence of the TiVo Time Warp Patent (U.S. Patent 6,233,389) from patent reexamination. The time warp patent, as most know, is the subject of a very interesting dispute with Echo Star relating to contempt. (and more importantly, $300 million dollars).
With the second reexamination all but concluded (90/009,329) , TiVo informed the CAFC of the development by letter on October 13, 2010. TiVo noted in their communication that the conclusion of the reexamination has no direct bearing on the contempt issue currently before the CAFC. Last Tuesday, EchoStar responded with a letter of their own in which EchoStar (surprise surprise) asserts that the conclusion of the reexamination has everything to do with the issue on appeal.
In their letter (here), EchoStar argues that the reexamination creates additional, substantial open issues regarding infringement. EchoStar argues that TiVo has disclaimed claim scope of several key terms. In arriving at this conclusion, EchoStar attempts to seize on certain examiner language provided in the notice of the intent to issue the reexamination certificate (NIRC, 10/6/10).
In the NIRC (here), the examiner explained that:
Specifically, Patent owner has now clarified and further defined the meaning of the claim terms “transform object”, “source object”, “sink object”, and “automatic[ally] flow control[led]” in light of the understanding of the terms provided in the ‘389 specification. The examiner now interprets these terms in light of Patent owner’s arguments, and as expressly disclosed in the ‘389 specification. (emphasis added)
In their letter, Echostar has focused on the language clarified and further defined as an indication that the USPTO somehow relied upon a disclaimer of claim scope to confirm the TiVo patent.
While the examiner explained that the supplemental declaration materials filed by TiVo further clarified and refined previously made arguments (i.e., original declarations), this does not necessarily mean that any disclaimer was made. In fact, knowing full well the impact of any statements made during the patent reexamination on the ongoing dispute with EchoStar, it seems very unlikely that such a disclaimer would exist in fact. Likewise, unless clear and unequivocally made by TiVo in their filings, any examiner comments in the NIRC are not binding on TiVo. Salazar v. Proctor & Gamble Company, 414 F3d. 1342 (Fed. Cir 2005)
Of course, the ultimate question of whether or not disclaimer exists is not really important to EchoStar, they would just like to derail the appeal and get a remand, or a reversal based on “additional, substantial open issues.”