Reexam Claim Construction Thwarts Subsequent Infringement Claim

01 Communique Lab., Inc. v. Citrix Sys., No. 2017-1869, 2018 U.S. App. LEXIS 10614 (Fed. Cir. Apr. 26, 2018) (Before Newman, Mayer, and Stoll, J.) (Opinion for the court, Mayer, J.)

Communique alleged infringement of the ‘479 patent by the Citrix GoToMyPC product. The court stayed the infringement proceedings, pending Citrix’s unsuccessful effort to invalidate claims 24 and 45 of the ‘479 patent during an inter partes reexamination, based on Citrix’s prior art BuddyHelp product. The Board upheld claims 24 and 45 based on a narrow claim construction that avoided the prior art. In the district court, Communique moved to exclude the claim construction from the evidence at trial. The court allowed the evidence as part of the prosecution history, noting that Communique failed to show the evidence was prejudicial.

Citrix argued it did not infringe the ‘479 patent under the narrow claim construction from the reexam, because the claimed “location facility” creates a communication channel according to the patent, whereas a remote personal computer creates the communication channel in the GoToMyPC product. Alternately, if “location facility” is construed more broadly to encompass directing other components to create the communication channel, such as the end point computers, the claims would be invalid in light of the prior art.

The district court applied a narrow construction, consistent with the reexam. The jury found the claims valid and non-infringed. Communique moved for a JMOL of infringement and a new trial. The lower court denied both requests.

Communique appealed the denial of a new trial by arguing unfairness and prejudice arising from Citrix’s defense, including the reexam evidence, which Communique characterized as “practicing the prior art.” This defense allegedly allowed the district court to bypass the required comparison between the asserted claims and the accused product. Communique argued that the district court committed reversible error by shifting focus to the similarities between Citrix’s GoToMyPC product and its prior art BuddyHelp product.

The Federal Circuit rejected Communique’s appeal. The court properly relied on a comparison of the allegedly infringing GoToMyPC product to the asserted patent claims, as shown by careful jury instructions. Citrix’s comparison to the BuddyHelp prior art, in aid of a legitimate defense, did not cause prejudice to Communique. In reaching its decision, the Court noted that claim terms must be construed the same way for both invalidity and infringement. Thus, if a narrow construction was appropriate for validity in the reexamination to avoid the prior art, a broader construction should not be applied against alleged infringers.

Take Away

A litigant is not precluded from arguing that if a claim term must be broadly interpreted to read on an accused device, then this same broad construction will read on the prior art. Furthermore, claim construction must be consistent for invalidity and infringement purposes.Thus, plaintiff-patentee was not prejudiced by evidence from a reexamination concerning a narrow claim construction it relied upon to overcome prior art having features in common with the accused product at issue in the district court.

The Author

Joseph Robinson

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

Joseph Robinson

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

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