The opinion of the court was delivered by: Honorable Barry Ted Moskowitz United States District Judge
ORDER DENYING DEFENDANTS' MOTION FOR SUMMARY JUDGMENT
These consolidated cases arise out of Plaintiff Jens Erik Sorensen's allegations of infringement of United States Patent No. 4,935,184 (the "'184 Patent"). On August 19, the remaining defendants (Emerson Electric Co., Ryobi Technologies, Inc., and Rally Manufacturing, Inc., collectively "Defendants") moved for summary judgment. Defendants assert that Sorensen's cancellation of dependent Claims 2 and 4 of the '184 Patent during reexamination proceedings substantively changed the scope of independent Claim 1, resulting in absolute intervening rights for Defendants. For the reasons set forth below, the Court DENIES Defendants' motion as premature.
The '184 Patent describes a process for creating injection-molded cup-like plastic objects. In December 2007 and February 2008, the Patent and Trademark Office ("PTO") granted two separate requests for reexamination of the '184 Patent. The resulting reexamination proceedings were merged in February 2008.
The central topic of the reexamination proceedings, as they relate to Defendants' motion, is the definition of the term "laminated walls." The first sentence of Claim 1 of the '184 Patent claims "[a] method of cyclic injection molding a thin-walled hollow, plastic product having a closed end and an open end with laminated walls terminating in a rim at the open end . . . ." Claim 1 is the only independent claim in the '184 Patent, and thus all embodiments of the patented invention must contain "laminated walls."
From the outset of the reexamination proceedings, Sorensen urged that "laminated walls" should be defined as "substantially coextensive layers in [a] face-to-face contacting relationship that cover and spread over one another" ("the 'layers' definition"). The Examiner initially adopted this definition in the First (non-final) Agency Action (Oct. 31, 2008). This definition is consistent with Figures 2A and 2B of the '184 Patent, which depict the creation of a cup-like object whose side walls are composed of two overlapping layers of plastic.
However, in the Second (non-final) Office Action (Aug. 21, 2009), the Examiner found that the "layers" definition is not sufficiently broad to cover the plastic product depicted in Figures 4 and 5 and (according to the Examiner) described in Claims 2 and 4. The two plastic components forming the cup-like object in Figures 4 and 5 are depicted as strips running lengthwise up and down the side of the cup-like object, touching each other only along their respective edges. No part of Figures 4 or 5 shows the two plastic components overlapping in layers (as is depicted in Figures 2A and 2B).
Consequently, the Examiner broadened the definition of "laminated" to include edge-to-edge abutment, stating in the Second (non-final) Office Action that "for an object to be 'laminated' it must be composed of substantially coextensive parts in [a] face-to-face contacting relationship" (the "'edges' definition"). According to the Examiner, the application of the edges definition enabled dependent Claims 2 and 4 (as supposedly illustrated in Figures 4 and 5) to contain "laminated walls," and thereby to fit within the limitations of independent Claim 1. The Examiner maintained the "edges" definition in the Final Office Action (Jan. 8, 2011).
However, after applying the "edges" definition to all instances of the phrase "laminated walls," the Examiner rejected all claims in the '184 Patent as anticipated by the prior art.*fn1 Rather than appealing all findings contained in the Final Action, Sorensen elected (after a conversation with the Examiner) to cancel Claims 2 and 4. This allowed the Examiner to change the definition of "laminated walls" from the "edges" definition back to the "layers" definition, and thereby to eliminate six of the nine prior art rejections contained in the final action.
On August 19, 2011, Defendants in the present litigation moved for summary judgment based on their argument that the cancellation of Claims 2 and 4 (both of which are dependent on Claim 1 and are described as "embodiments" of Claim 1) substantively changed the scope of Claim 1. A claim construction hearing is scheduled for Monday, February 27, 2012.
"The doctrine of absolute intervening rights protects an accused
infringer's right to continue using, selling, or offering to sell
specific products covered by reissued or reexamined claims when the
particular accused product had been made before the date of the
reissue or reexamination and the scope of the claims is substantively
changed." Marine Polymer Technologies, Inc. v. HemCon, Inc., --- F.3d
---, 2011 WL 4435986, at *4 (Fed. Cir. Sept. 26, 2011) (emphasis added); see 35 U.S.C. §§ 252*fn2
and 307(b)*fn3 . In Neupak, Inc. v. Ideal
Manufacturing and Sales Corp., 41 Fed. Appx. 435 (Fed. Cir. 2002), the
Federal Circuit explained:
The effect of a reexamined patent during the period before issuance of the reexamination certificate is governed by 35 U.S.C. §§ 252 and 307(b). Under those provisions, if the patentee makes substantive changes in the claims during reexamination, there is an irrebuttable presumption that the original claims were materially flawed. . . . In that setting, the statute relieves those who ...