Patents Post-Grant: Ongoing Patent Reexamination Aids Summary Judgment on Invalidity

Patents Post-Grant: Ongoing Patent Reexamination Aids Summary Judgment on Invalidity

Court Cites ACP as Supportive of Summary Judgment of Invalidity

Generally, when reexamination evidence is used to support contentions of patent claim invalidity, the accused infringers do not simply attempt to equate the grant of a request for reexamination with patent claim invalidity. Instead, the accused infringers often attempt to use the grant of reexamination to substantiate their invalidity contentions. The argument is that an alleged infringer's invalidity contentions are entitled to more weight where the Patent Office has found at least some substantial new question of patentability based on those same arguments, or can demonstrate repeated rejections of the claims by the USPTO.

This tactic, while often deemed too prejudicial for consideration by a jury is often times an acceptable practice for summary judgment purposes. The advantages of this practice were demonstrated last week in General Electric v. Mitsubishi Heavy Industries (NDTX).

In leveraging the advancing stage of the parallel inter partes patent reexamination of the GE patent, the Court explained:

The Court's conclusion on this point [finding the patent invalid based upon the same art] is bolstered by the "Action Closing Prosecution" ("the Action") that was recently issued by the United States Patent and Trademark Office. The Action, which concludes the reexamination of the '055 patent that Mitsubishi requested in April of 2011, declares claims 1 and 12 of the '055 patent invalid as anticipated by GE's of U.S. Patent No. 6,879,055 Ex. 1, at 8-9. The Action expressly rejects the very same reasoning GE asks the Court to adopt:

Patent owner argues at pages 6-7 of the Response that MOD-SA does not disclose a "base frame" made of discrete upper and lower parts, because claim 1 requires both the upper part of the base frame to carry a drive train, and the lower part of the base frame to have an azimuthal drive device. As reasoned by the patent owner, MOD-SA does not satisfy these limitations. The examiner disagrees because the structure encompassed by the plain language of claim 1 is fully met by the structure exhibited by MOD-SA. There is no apparent ambiguity surrounding the terminology used in claim 1 relative to the ['055 patent] disclosure. In the ['055 patent], the upper part (6) carries the drive train (12), and the lower part (16) has the azimuthal drive device (23). In comparison, the MOD-SA apparatus exhibits an upper part (bedplate) carrying a drive train (gearbox), and a lower part (yaw subsystem) having an azimuthal drive device (yaw drive mechanism. Patent owner's argument thus relies upon semantic differences in wording, which is considered unpersuasive in distinguishing MOD-SA.

Id. at 16.          .                     .                  .

GE reminds the Court that the Patent Office's Action is not final and argues that, as such, it is not relevant to the issues pending before the Court.

The Court has considered the Notice and Response. The Court reached the decision that Mitsubishi is entitled to summary judgment of invalidity on its own accord, without reference to the Patent Office's Action. The Action, therefore, is relevant only to the extent that it validates the Court's decision.

With inferences weighed in favor of the party opposing summary judgment of invalidity, the added benefit of an ongoing reexamination can be just enough to tip the scales. (decision here)

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