Claim Cancellation is Not Always Necessary

A successful post grant patent challenge, whether it be through patent reexamination or a Patent Trial & Appeal Board (PTAB) review proceeding, does not always require a claim amendment or cancellation. In other words, even where claims are found patentable, statements in the reexamination record that are inconsistent with arguments made in a concurrent litigation may provide key evidence necessary to prevail during a Markman hearing, or offer new, non-infringement positions to defendants.

Last week, in In re Transdata, Inc. Smart MetersPatent Litigation (OKWD), the Court cited to statements made by a Patentee during patent reexamination (90/011,432) of U.S. Patent 6,181,294 that were deemed inconsistent with an earlier Markman Order. The court expained the original Order, noting:

The Court ultimately determined the proper construction of the phrase “electric meter circuitry” was circuitry capable of manipulating, storing, displaying, or gathering electric meter data. The Court specifically rejected the proposed construction submitted by Plaintiff which would have required the use of a digital electric meter.

In explaining the change in circumstances that resulted from the additional post grant prosecution history the court explained,

. . .Plaintiff notes that during the recent reexamination proceedings, it submitted an express disclaimer which stated, “A person of ordinary skill in the art in 1997 . . . would have understood that the electric meter circuitry disclosed and claimed . . . measures voltage or current and determines metering data by implementing digital circuitry. . . .A person of ordnary skill in the art would have understood that ‘electric meter circuitry’ does not include a  conventional electricity meter utilizing a rotating disc. 00649927-28 (emphasis added).) Plaintiff then directs the Court to the Patent Office’s confirmation, wherein it determined the patents were indeed valid, stating: “Examiner agrees with patent owner’s argument that the claimed ‘electric meter circuitry’ as described in the ‘294 patent is distinguishable from the prior art because it requires the use of digital circuitry and excludes electromechanical meters from the claimed ‘electric meter circuitry .’”

[D]uring the re-examination proceedings, Plaintiff made a clear and unambiguous statement that its patents required digital meters and that the Patent Office adopted that clear and unequivocal statement in determining that the patents were, in fact, valid.

As can be appreciated, a successful post grant patent challenge does not necessarily require that a Patentee cancel or amend claims. The creation of additional prosecution history, post patent  issuance, is a significant benefit to accused infringers.  Indeed, the new PTAB post grant patent challenge proceedings provide express claim constructions in a mere 4-5 months from petition filing (Trial Order). This accelerated focus on claim construction issues has been one of the many game changing features of the new proceedings of the America Invents Act.

This case was brought to my attention by the great Docket Navigator.