On Friday, visiting Judge Wolson granted summary judgment of non-infringement in PACT XPP Schweiz Ag v. Intel Corp., C.A. No. 19-1006-JDW (D. Del. July 26, 2024), after the patentee shot themselves in the foot while opposing invalidity before the PTO in an ex parte reexamination.
Basically, the patent relates to a connection within a microprocessor. The asserted claims require a "dedicated connection" between two things.
During re-exam (co-pending with the district court case), the PTO rejected the claims based on a prior art reference that could be configured to connect multiple different things on either side. The patentee pushed back, arguing that a "dedicated connection" requires connecting the two things and nothing else:
Under PACT’s reading, the Examiner’s interpretation of “dedicated” as synonymous with “direct” and “uninterrupted” was overbroad. Instead, citing lay dictionary definitions and the claim language, PACT insisted that a person of ordinary skill in the art would understand that a direct connection is a dedicated connection only when that connection is devoted to connecting two units while excluding connection to any and all other units. Therefore, “a communication line(s) that is shared by a multitude of different devices cannot be a ‘dedicated’ connection.” (Id. at 11 (emphasis in original).) As PACT argued, it is not enough for a processor to connect to the memory via an uninterrupted, direct route. To fall within the ‘593 Patent’s “dedicated connection” limitation, that connection must connect only one processor to one memory.
Id. at 5. The examiner relented and ultimately confirmed patentability.
Back at the district court, the defendant moved for summary judgment of no infringement, because the connection in the accused devices can connect more than just two things.
The patentee pushed back, seemingly arguing that it had actually taken multiple, contradictory positions:
I am not persuaded by PACT’s arguments against applying the doctrine of prosecution disclaimer. PACT suggests that I have to consider other statements in the prosecution history that render this assertion ambiguous. PACT is correct, of course, that I can’t view its statements in isolation. . . . But that doesn’t mean that I have to credit arguments that PACT advanced but then abandoned in the prosecution history. Rather, I have to view the statements that PACT made in light of the context of the prosecution history as a whole to understand what, exactly, PACT was telling the examiner. To hold otherwise, as PACT seems to urge, would give an applicant an incentive to make a broad spectrum of potentially contradictory assertions to an examiner during a prosecution to make sure that none of those statements could be controlling at a later date. That’s not the law.
Id. at 12. My read of that is that, basically, a patentee can't just throw stuff at the wall and see what sticks.
The Court ultimately agreed with the defendant, and granted summary judgment on all claims:
In many instances, the law permits a party to take contradictory positions on a particular issue at different times and in different courts. But patent prosecution and subsequent litigation isn’t one of them; a patentee cannot have his claim and eat it, too. I will grant summary judgment for Intel and deny the Parties’ motions in limine and Daubert motions as moot.
Id. at 14.
If you enjoyed this post, consider subscribing to receive free e-mail updates about new posts.
