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Failure to Update Infringement Contentions with New Reexamination Claims Fatal for Patentee

On April 22, 2016, a three judge panel of the United States Court of Appeals for the Federal Circuit, consisting of Judges Prost, Dyk and O’Malley, affirmed a district court’s decision to dismiss as moot a patent case involving only cancelled claims.

In Target Training Int’l, Ltd. v. Extended DISC North America, Inc., Case Nos. 2015-1873,  2015-1908, Plaintiff Target Training International, Ltd. (“TTI”) accused Extended DISC North America, Inc. (“EDNA”) of infringing U.S. Patent No. 7,249,372 (the “’372 Patent”) directed to  processing and distributing reports over a network in response to receiving input from a user.

After the lawsuit commenced, EDNA’s franchisor, Extended DISC International Oy Ltd (“EDI”) requested ex parte reexamination of all the claims (1-11) of the ’372 Patent.  The U.S. Patent and Trademark Office (“USPTO”) granted the request and the litigation was ultimately stayed pending the resolution of the reexamination.  Before the stay was entered, however, TTI had served its preliminary infringement contentions asserting claims 1, 2 and 5-11 of the ’372 Patent against EDNA.

On January 12, 2015, the USPTO issued a reexamination certificate cancelling claims 1-11 of the ’372 Patent and issuing thirty new claims, 12-41.  The district court reopened the case on the same day only to dismiss it as moot on June 1, 2015 because all of the claims TTI previously asserted were cancelled during the reexamination.  The district court noted that none of the new claims were part of the ’372 Patent when the complaint was filed and TTI was bound to its preliminary infringement contentions pursuant to Local Patent Rule 3-1, which TTI never sought to amend to include the newly-added claims.

The Federal Circuit affirmed the district court’s decision.  The Court first acknowledged that Fresenius makes clear that “when a claim is cancelled, the patentee loses any cause of action based on that claim, and any pending litigation in which the claims are asserted becomes moot.”  Slip Op. at 8 (internal citations omitted).  As such, with respect to the original cancelled claims of the ’372 Patent, the Court upheld the district court’s finding that Fresenius rendered the suit moot to the extent those were the only claims asserted in the litigation.

The real question before the Federal Circuit, however, was “whether it was appropriate for the district court to dismiss the case when TTI failed to amend its infringement contentions to assert infringement of any of the thirty newly added claims.”  Slip Op. at 9.  The Court found that it was indeed appropriate, reasoning that the newly-added claims were never actually asserted in the existing litigation.

Fatal to its case was the fact that pursuant to Local Patent Rule 3-1, TTI was bound to its preliminary infringement contentions, which TTI never moved to amend to include the newly-added claims.  The Federal Circuit offered little sympathy to TTI’s plight holding that there is “no authority for the proposition that unasserted patent claims must be considered by the district court prior to the dismissal of a case based on cancelled asserted claims.”  Slip Op. at 9 (emphasis in original).  In the end, because TTI failed to assert the newly-added claims, despite several opportunities to do so, the Federal Circuit found that the district court had no obligation to provide relief to TTI not expressly sought and therefore affirmed the dismissal of the case as moot.

The takeaway from this case is that at the conclusion of any post-grant proceeding before the USPTO, a party should promptly thereafter determine whether any claims newly-added to the patent-at-issue are infringed, and if so, affirmatively seek to amend its infringement contentions accordingly.

©1994-2020 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. All Rights Reserved.National Law Review, Volume VI, Number 116


About this Author

Brad Scheller Patent Litigation Attorney Mintz Law Firm

Brad Scheller is a trial attorney who focuses his patent litigation practice on representing clients in the automotive devices, thermoplastics, electronic components and consumer products industries in federal district court, before the Patent Trial and Appeal Board and at the International Trade Commission. With a background in mechanical engineering and over 14 years of experience practicing law, Brad has successfully represented patent owners in enforcing their rights against infringers and protecting those rights from challenges of invalidity, and has also successfully defended and...

Vincent M. Ferraro, Mintz Levin, Patent Litigation Licensing & Technology Transactions Strategic IP Monetization & Licensing IPRs & Other Post-Grant Proceedings Federal District Court

Vincent’s practice focuses on patent disputes in Federal District Courts and before the U.S. Patent Trial and Appeal Board. With over 10 years of experience, Vincent has handled patent disputes involving telecommunications, cellphone and smartphone technology, digital photography, image processing, electronic circuitry, electrical components, computer software and hardware, LCD technology, data mining, financing, mechanical devices, medical devices and implants, consumer products, GPS technology, e-commerce, and Internet security. In patent litigation cases, he guides clients through all phases of the case, including pre-suit due diligence, claim construction, discovery, depositions, hearings, and trial.

Vincent also has significant experience representing clients in post-grant proceedings before the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office, including inter partes review (IPR) and covered business method (CBM) patent review proceedings. He has represented both petitioners and patent owners in these proceedings.

Vincent also regularly counsels clients on their IP portfolio strategies and assists them in developing design strategies for their products. He works closely with inventors, analyzes new inventions, drafts U.S. patent applications, and prosecutes patents before the U.S. Patent and Trademark Office in various high-technology fields and on consumer products. He also renders patent freedom-to-operate and validity opinions.