Manner of Amendment Obscures Claim Meaning
Back in October of last year I explained the recently concluded patent reexamination of Card Activation’s U.S. Patent 6,032,859. In the previous post, I discussed that placing confirmed/allowed dependent claims in independent form was unnecessary in patent reexamination.(MPEP 2260.01) While this procedural nuance would seem fairly trivial, the manner of making amendments can have significant impact outside the USPTO.
In the case of the Card Activation reexamination, claims 20 and 29 (independent) were amended to include the features of confirmed claims 21 and 32. That is to say, claims 21 and 32 could have simply been retained in their current form, without the need to amend the base claim. At the time, I explained that Card Activation may have unnecessarily narrowed other dependent claims, which could result in an intervening rights defense.
Last week, the Delaware District Court considered the manner of this amendment in an altogether different context. The Court found the amended claim lacking written description support on summary judgement, and in the process, shed some light on the seemingly short sighted choice in amendment style.
Original claims 20 and 29 recited a step of “entering an authorization code through the keypad…” Dependent claims 21 and 32 recited that entering the authorization code included entering a customer code, and a clerk code. In the Court’s Summary Judgement decision (here) it is explained that Card Activation argued at Markman (footnote 29) that the authorization step embraced three distinct codes–a generic authorization code (base claim), and a customer code and a clerk code (dependent claim).
So, in amending base claims 20 and 29 to include the customer code and clerk code, without deleting the more generic “authorization code” language of the base claim, Card’s claim construction argument was bolstered. Simply standing by the confirmed dependent claims, rather than amending the base claims in this manner would not have had the same claim construction benefit.
So, that solves that bit of mystery. That is to say, from the Court’s perspective the amendment was deliberately designed to game the system for claim construction purposes.
Unfortunately, for Card Activation, the Court did not find written support for three distinct authorization codes and found the claims invalid under 35 U.S.C. 112 1st paragraph.
As can be appreciated from this case, USPTO statistics on claim confirmation in patent reexamination only tell part of the story. A successful patent reexamination from a defendant’s perspective does not always result in claim cancellation. In other words, even where claims are confirmed, statements in the reexamination record, and even minor claim changes may provide new, non-infringement and invalidity positions in parallel litigation.