IP Law Daily, PATENT—DDel: Claims for Personal Communication Device That Were Substantively Changed During Reexamination Excluded from Trial of Infringement Suit Against Apple, (Nov 19, 2012)

By Peter Reap, J.D., LLM

Claims 1, 2, and 3 of MobileMedia Ideas, LLC’s U.S. Patent No. 6,427,078 (“the '078 patent”) that were asserted as part of MobileMedia’s patent infringement suit against Apple and then were substantively changed during the pendency of the suit as a result of the U.S. Patent and Trademark Office’s ex parte reexamination of the '078 patent were excluded from trial, the federal district court in Wilmington, Delaware, has decided (MobileMedia Ideas, LLC v. Apple Inc., November 15, 2012, Robinson, S.).

Because neither party had the opportunity to offer infringement or invalidity opinions on the reexamined claims, proceeding with the reexamined claims at the current stage of the proceedings could open the door to new and not vetted infringement theories and opinions at trial, according to the court. Further, Apple would be unduly prejudiced if the reexamined claims were substituted now.

On March 31, 2010, MobileMedia filed a patent infringement complaint against Apple, alleging infringement of, among other patents, the '078 patent. Specifically, Mobile Media alleged that certain Apple products infringed claims 1, 2, 3, 8, and 73, as originally issued, of the '078 patent. Apple asserted affirmative defenses of, inter alia, non-infringement and invalidity.

Fact discovery closed October 31, 2011, and expert discovery closed May 4, 2012. The parties filed their joint claim construction chart on March 23, 2012, and Apple moved for summary judgment of invalidity and non-infringement on May 14, 2012 and June 4, 2012, respectively. In addition, a jury trial for the case was scheduled to begin on December 3, 2012.

During the pendency of the dispute and without a motion to stay proceedings in this case by either party, the U.S. Patent & Trademark Office (“PTO”) conducted an ex parte reexamination of the '078 patent. On September 4, 2012, a reexamination certificate for the '078 patent issued, determining claim 1 to be patentable as amended and claims 2 and 3 to be patentable as dependent from amended claim 1.

In determining whether, for purposes of infringement damages, reexamined claims were legally identical to their original counterpart, the Federal Circuit looked at whether the reexamined claims were “without substantive change.” To decide whether substantive changes had been made, a court was required to discern whether the scope of the claims were identical, the court noted. Claims amended during reexamination were not deemed to be per se substantively changed. Instead, it was necessary to analyze the claims of the original and the reexamined patents in light of the particular facts, including the prior art, the prosecution history, other claims, along with any other pertinent information.

The amendments to claim 1 made during reexamination incorporated limitations from other claims of the '078 patent, namely, a “portable cellular mobile phone,” “microprocessor,” “means for processing and for storing…,” and “display [that] presents image information obtained by said camera unit.” MobileMedia argued that Apple’s experts “have opined on all of the elements in the amended claim, in the course of responding to unamended claim 73 and dependent claim 8 (which depended from original claim 1 ).” Although Apple’s experts addressed all of these limitations in the context of one asserted claim or another, the combination of elements in amended claim 1 did not exist in a single claim prior to the issuance of the reexamination certificate, the court noted.

Asserted claim 8, now cancelled, disclosed a device comprising, among other things, a “camera unit” that in turn comprised “a camera,” “optics,” “at least one memory unit,” “an output”, “means for processing” and “means for storing.” The “camera unit” limitation in amended claim 1 comprised those same limitations. However, claim 8 was substantively different from amended claim 1 in that it did not include a limitation for a “display,” according to the court. On the other hand, the “display” limitation did appear in claim 73, but claim 73 taught a different “camera unit.” The “camera unit” of claim 73 only required “optics” and “means for processing and for storing.”

In addition, in claim 73, the “microprocessor” was described as being part of the “camera unit” limitation. The “microprocessor” in amended claim 1, by its plain language, was part of the “data processing unit” limitation, not the camera unit. Finally, the “device” in the preamble of claim 1 was amended to “portable cellular mobile phone.”

In light of the amendments described above, the scope of claim 1 was substantively changed during reexamination, the court held. Claim 1, as asserted, was significantly different from claim 1 as amended during reexamination. It was also significantly different from claims 8 and 73. As claims 2 and 3 were dependent from amended claim 1, they were also substantively changed for the same reasons, the court determined.

The parties completed fact discovery, served expert reports, completed expert discovery, filed their joint claim construction chart, and completed briefing on summary judgment regarding infringement and invalidity prior to the issuance of the reexamination certificate for the '078 patent. Because neither party had the opportunity to offer infringement or invalidity opinions on the reexamined claims, proceeding with the reexamined claims at this stage could open the door to new infringement theories and opinions at trial that had not been vetted through discovery.

In addition, Apple would be unduly prejudiced if the reexamined claims were to be substituted at this stage of litigation. For example, Apple did not have the opportunity to identify prior art that could anticipate claim 1, as amended. Apple framed its invalidity defenses for the '078 patent in light of the original claims, the court observed.

Therefore, claim 1, as amended during reexamination, as well as claims 2 and 3, of the '078 patent were excluded from trial.

The case is Civ. No. 10-258-SLR.

Jack B. Blumenfeld (Morris, Nichols, Arsht & Tunnell LLP) for MobileMedia Ideas LLC. Richard K. Herrmann (Morris James LLP) for Apple Inc.

Cases: Patent DelawareNews