Patentee’s Rescinding of Earlier Made Disclaimer Deemed “Gamesmanship” Back in June of this year, I discussed the case of Beneficial Innovations, Inc. v. AOL, LLC. et al., 2-07-cv-00555 (TXED) (Ward, J.). The previous post explained that even where a patent reexamination results in a win (i.e., confirmed claims), the creation of additional prosecution history estoppel/disclaimer may result in a surrender of claim scope. In Beneficial, U.S. patents 6,183,366 & 6,712,702 are currently asserted. These patents relate to an interactive network information service in which ”unrequested“ advertising presentations are delivered to a network node. An ex parte patent reexamination was filed against the ‘136 Patent in October of 2009 (90/009,593)In their Markman briefing, Beneficial asserted that unrequested defined “not requested by the user.” Conversely, the defendants asserted that unrequested defined “not sent in response to a signal from a user’s computer” In April of this year, a Markman Order was issued accepting Beneficial’s construction.Unfortunately, one week prior to the Markman Order, Beneficial’s response in the parallel ex parte patent reexamination appeared to advance the defendants’ Markman definition before the USPTO. Annoyed by the seeming inconsistency, Judge Ward issued a revised Markman Order at the end of June (adopting the defendants construction). In mid-July, in response to a Final Rejection, Beneficial filed a further response that clarified the earlier statement to the USPTO. Shortly thereafter, Beneficial sought a clarification from Judge Ward with respect to the revised Markman Order.In response, Judge Ward clarified one thing, namely, that he is not one to mess with…..Throughout the short opinion (here), Judge Ward takes issue with the timing of Beneficial’s actions. He notes that the initial inconsistency was filed “a week before this court’s claim construction order.” With respect to Beneficial’s filing of their revised statement to the USPTO on July 14, 2010, Judge Ward states “[i]t is important to note that this correspondence to the USPTO was a mere two weeks after the Court granted the first motion for reconsideration.” (June 30, 2010). Finally, with respect to Beneficial’s request to revisit the Markman issue, Judge Ward explains “Then merely two weeks after this correspondence with the USPTO, on July 30, 2010, Plaintiff filed a motion for clarification of the Court‟s construction of the term “unrequested” from the Court‟s previous motion for reconsideration.”Based on the perception that Beneficial’s timing evidenced a deliberate attempt to game the system, Judge Ward refused to disturb his late adoption of the defendants’ definition. Judge Ward summarized the issue as:Plaintiff argues that “[t]his patent holder‟s statement to the PTO regarding its definition of the phrase “input by the user” is binding in this litigation.” (Dkt. No. 273 at 8.) The Court disagrees. The Court rejects this attempt by Plaintiff to alter the Court‟s construction of “unrequested” by making after-the-fact, self-serving statements to the USPTO in reexamination. To allow Plaintiff‟s argument to succeed would open the door for “gamesmanship” where patentees could take advantage of reexamination to alter the Court‟s construction of disputed claim terms after the Court has issued its construction.PPG COMMENT: Beneficial’s response to the non-final action (February 5th) in patent reexamination was due to the USPTO on April 5th, one week prior to the Markman Order. Likewise, with a Final Action issued by the USPTO on May 14, 2010, Beneficial’s second response was due on July 14th. Both of these filing deadlines were driven by the USPTO, not any ulterior motive of the Patentee. With the Final Action being issued so quickly after Beneficial’s first submission, there did not seem much in the way of opportunity to submit an earlier clarification (it appears the issue of the inconsistency was briefed while the Final Action remained outstanding). Sadly for Beneficial, it appears that they are just a victim of a poorly worded initial response.As to gamesmanship, the reexamination at issue was requested roughly two years after the initial complaint. A further request for ex parte patent reexamination was recently filed on July 27, 2010 (90/011,117), thus, the defendants do not have much room to complain in this regard.Finally, the rescinding of an earlier disclaimer seems to call into question the “clear disavowal” necessary to limit the claim term at issue.  See Springs Window Fashions LP v. Novo Indus., L.P., 323 F.3d 989, 995 (Fed.Cir.2003). (If the applicant mistakenly disclaimed coverage of the claimed invention, then the applicant should have amended the file to reflect the error, as the applicant is the party in the best position to do so. The applicant, however, never retracted any of his statements . . .)Beneficial may have a good chance of sorting this out on appeal to the CAFC, still, their imprecise wording in patent reexamination will amount to a very expensive miss

Back in June of this year, I discussed the case of Beneficial Innovations, Inc. v. AOL, LLC. et al., 2-07-cv-00555 (TXED) (Ward, J.). The previous post explained that even where a patent reexamination results in a win (i.e., confirmed claims), the creation of additional prosecution history estoppel/disclaimer may result in a surrender of claim scope. In Beneficial, U.S. patents 6,183,366 & 6,712,702 are currently asserted. These patents relate to an interactive network information service in which ”unrequested“ advertising presentations are delivered to a network node. An ex parte patent reexamination was filed against the ‘136 Patent in October of 2009 (90/009,593)

In their Markman briefing, Beneficial asserted that unrequested defined “not requested by the user.” Conversely, the defendants asserted that unrequested defined “not sent in response to a signal from a user’s computer” In April of this year, a Markman Order was issued accepting Beneficial’s construction.

Unfortunately, one week prior to the Markman Order, Beneficial’s response in the parallel ex parte patent reexamination appeared to advance the defendants’ Markman definition before the USPTO. Annoyed by the seeming inconsistency, Judge Ward issued a revised Markman Order at the end of June (adopting the defendants construction). In mid-July, in response to a Final Rejection, Beneficial filed a further response that clarified the earlier statement to the USPTO. Shortly thereafter, Beneficial sought a clarification from Judge Ward with respect to the revised Markman Order.

In response, Judge Ward clarified one thing, namely, that he is not one to mess with…..

Throughout the short opinion (here), Judge Ward takes issue with the timing of Beneficial’s actions. He notes that the initial inconsistency was filed “a week before this court’s claim construction order.” With respect to Beneficial’s filing of their revised statement to the USPTO on July 14, 2010, Judge Ward states “[i]t is important to note that this correspondence to the USPTO was a mere two weeks after the Court granted the first motion for reconsideration.” (June 30, 2010). Finally, with respect to Beneficial’s request to revisit the Markman issue, Judge Ward explains “Then merely two weeks after this correspondence with the USPTO, on July 30, 2010, Plaintiff filed a motion for clarification of the Court‟s construction of the term “unrequested” from the Court‟s previous motion for reconsideration.”

Based on the perception that Beneficial’s timing evidenced a deliberate attempt to game the system, Judge Ward refused to disturb his late adoption of the defendants’ definition. Judge Ward summarized the issue as:

Plaintiff argues that “[t]his patent holder‟s statement to the PTO regarding its definition of the phrase “input by the user” is binding in this litigation.” (Dkt. No. 273 at 8.) The Court disagrees. The Court rejects this attempt by Plaintiff to alter the Court‟s construction of “unrequested” by making after-the-fact, self-serving statements to the USPTO in reexamination. To allow Plaintiff‟s argument to succeed would open the door for “gamesmanship” where patentees could take advantage of reexamination to alter the Court‟s construction of disputed claim terms after the Court has issued its construction.

PPG COMMENT: Beneficial’s response to the non-final action (February 5th) in patent reexamination was due to the USPTO on April 5th, one week prior to the Markman Order. Likewise, with a Final Action issued by the USPTO on May 14, 2010, Beneficial’s second response was due on July 14th. Both of these filing deadlines were driven by the USPTO, not any ulterior motive of the Patentee. With the Final Action being issued so quickly after Beneficial’s first submission, there did not seem much in the way of opportunity to submit an earlier clarification (it appears the issue of the inconsistency was briefed while the Final Action remained outstanding). Sadly for Beneficial, it appears that they are just a victim of a poorly worded initial response.

As to gamesmanship, the reexamination at issue was requested roughly two years after the initial complaint. A further request for ex parte patent reexamination was recently filed on July 27, 2010 (90/011,117), thus, the defendants do not have much room to complain in this regard.

Finally, the rescinding of an earlier disclaimer seems to call into question the “clear disavowal” necessary to limit the claim term at issue.  See Springs Window Fashions LP v. Novo Indus., L.P., 323 F.3d 989, 995 (Fed.Cir.2003). (If the applicant mistakenly disclaimed coverage of the claimed invention, then the applicant should have amended the file to reflect the error, as the applicant is the party in the best position to do so. The applicant, however, never retracted any of his statements . . .)

Beneficial may have a good chance of sorting this out on appeal to the CAFC, still, their imprecise wording in patent reexamination will amount to a very expensive misstep