IP Law Daily, PATENT—DDel: Claims of GPS Technology Patent Were Substantively Changed During Reexamination; Damages Unavailable for Pre-Reexamination Infringement, (Nov 8, 2012)

By Thomas Long, J.D.

Communications technology company Exelis can go forward with a lawsuit alleging that several competitors infringed a patent for certain global positioning satellite (GPS) navigation systems technology, but Exelis could only seek damages for acts of infringement that took place after Exelis broadened the patent’s claims during a reexamination proceeding before the U.S. Patent and Trademark Office, the federal district court in Wilmington, Delaware has ruled (Exelis Inc. v. Cellco Partnership, November 6, 2012, Stark, L.). A number of cross-motions for summary judgment were denied, but the court determined that an “intervening rights” defense applied to all patent claims that were “substantively broadened” during reexamination.

Exelis filed this patent infringement action against Cellco Partnership, Qualcomm Inc., LG Electronics USA, Inc., LG Electronics, Inc., LG Mobilecomm U.S.A., Inc., Kyocera Corp., Kyocera International, Inc., Kyocera Wireless Corp., and Kyocera Communications, Inc. (collectively “Defendants”) on March 23, 2009. Exelis alleges that Defendants infringed U.S. Patent No. 5,365,450 (“the '450 patent”), titled “Hybrid GPS/Data Line Unit for Rapid, Precise, and Robust Position Determination.”

During prior litigation involving the patent, Exelis filed for ex parte reexamination of the patent by the U.S. Patent and Trademark Office. The request for reexamination was granted, and during reexamination, Exelis added new claims 12-57. The PTO issued a Reexamination Certificate allowing all 57 claims. Subsequently, Exelis initiated this infringement action.

Scope of Reexamination

The parties filed cross-motions for summary judgment under Sec. 305 of the Patent Act. Section 305 states, in part, “No proposed amended or new claim enlarging the scope of a claim of the patent will be permitted in a reexamination proceeding under this chapter.” Both motions raised the issues of (1) whether Exelis improperly broadened any claim during reexamination; and (2) whether Exelis sought reexamination for an improper purpose.

The Manual of Patent Examining Procedure (MPEP) explains that “a claim presented in a reexamination proceeding ‘enlarges the scope’ of the claims of the patent being reexamined where the claim is broader than each and every claim of the patent.” According to the MPEP, the standard used to evaluate a claim presented during reexamination is the same standard that is used to evaluate claims for purposes of reissue. The MPEP states, “A claim which has been broadened in a reissue as compared to its scope in the patent is not a broadened reissue claim if it is narrower than, or equal in scope to, any other claim which appears in the patent.”

The Defendants contended that, during reexamination, Exelis improperly broadened certain claims. Specifically, according to Defendants, in the original patent; “Satellite Data Message block” was limited to a block that is exactly 900 bits in length. After reexamination, however, the court construed “Satellite Data Message block” to mean blocks that are “900 bits or less” in length.

Exelis argued that the term “Satellite Data Message block” always covered blocks that are “900 bits or less” in length, and the scope of this term had not changed in any way during reexamination.

Neither side has compared the scope of the reexamined patent claims to the scope of the broadest pre-reexamination claim, the court said. The court noted that, even its construction of “Satellite Data Message block” resulted in reexamined claim 1 being broader than original claim 1, the reexamined claim 1 still might not violate Section 305 if reexamined claim 1 was narrower than some other claim of the original '450 patent. This uncertainty prevented the court from granting either side’s Sec. 305 summary judgment motion. The court denied both motions without prejudice to renew following trial in connection with any post-trial motions that may be filed.

The court also determined that the Defendants had not presented clear and convincing evidence establishing that Exelis filed for the reexamination for in improper purpose.

Patent Validity

The parties had filed competing motions seeking partial summary judgment under Sec. 112 of the Patent Act. These motions raised questions of indefiniteness, written description, enablement, and best mode.

Indefiniteness. The Defendants contended that two claim terms—“processing means” and “connecting means”—recited functions implemented by a microprocessor, requiring disclosure in the specification of a corresponding algorithm. No such algorithm was provided; thus, the Defendants argued, the claims in which these terms appeared were invalid.

The court said that, at this stage of the proceedings, it was not persuaded by the Defendants’ contention that the '450 patent did not disclose an algorithm. Exelis present an expert witness’s opinion that the specification of the patent as a whole would be read as an algorithm by one skilled in the art. Therefore, there was a genuine issue of material fact precluding summary judgment.

Written description. The Defendants contended that claim 10 and all claims dependent on claim 10 were invalid for lack of written description. However, the court said, the witness report provided by Exelis contained a lengthy analysis of written description and concluded that claim 10 complied with the requirements of Sec. 112. Both parties’ summary judgment motions on the issue were denied.

The court also denied Exelis’s motion for summary judgment

Best mode. Exelis sought partial summary judgment that the patent satisfied the “best mode” requirement of Sec. 112. Because the Defendants’ expert had cited evidence disputing Exelis’s version of the facts, summary judgment was not appropriate on the issue, the court decided.

Noninfringement

The Defendants sought summary judgment with respect to four issues relating to infringement: (1) the “MS-Assist” mode of operation does not infringe; (2) claims 13 and 20 are not infringed; (3) there is no infringement under the doctrine of equivalents; and (4) the doctrine of intervening rights applies to each claim of the reexamined '450 patent. (See D.I. 488). The court granted the motion on issues (1), (2), and (4) and denied as moot Defendants’ motion with respect to issue (3).

According to the court, there was no dispute that, as a result of the court’s claim construction ruling, the “MS-Assist” mode of operation of the Defendants’ products did not infringe any claim of the '450 patent. The parties also agreed that claims 13 and 20—which both required the transmission of a 900-bit Satellite Data Message block—were not infringed. With regard to the doctrine of equivalents, Exelis’s technical expert did not address this doctrine, and, as the court understood it, Exelis was not seeking to offer evidence of infringement by equivalents other than a narrow data transfer issue described in the expert’s report.

The Defendants contended that the doctrine of intervening rights should apply to every claim of the '450 patent as a result of claim amendments made during reexamination. The doctrine prevented a patentee from recovering pre-reexamination damages for infringement of claims that were “substantively changed” during reexamination. The Defendants argued, and the court agreed, that Exelis had made substantive changes to claim 1 during reexamination. First, the claim was narrowed to require a “storing” limitation. Second, the claim was amended to require the “earth based source” to receive satellite position data from the GPS satellites, which was an “origin” requirement not present in original claim 1. Third, Exelis broadened claim 1 by adding dependent claims specifying that the Satellite Data Message block of claim 1 is 900 bits in length. Therefore, the Defendants were entitled to intervening rights with respect to all claims of the '450 patent, and Exelis would be entitled to infringement damages only for the period following the issuance of the reexamination certificate.

The case is C.A. No. 09-190-LPS.

Gregory B. Williams (Fox Rothschild LLP) for Exelis Inc. John G. Day (Ashby & Geddes) for Cellco Partnership (d/b/a Verizon Wireless).

Cases: Patent DelawareNews