Parallel reexamination can serve as a trap for a plaintiff-patentee

This Legal Update is Contributed By: Aakarsh Kamra

In an Appeal from the United States District Court for the Central District of California in Case No. 04-CV-8604, the appellate panel agreed that statements made in an ongoing, pending reeexamination were relevant to the claim construction.

In this case, however, the Federal Circuit held that the reexamination statements were not direct enough to constitute prosecution disclaimer. The appellate court’s approach here looked particularly to the words used by to the patentee in the reexamination to identify any actual limitations or disclaimers and refused to read-between-the-lines to find implied disclaimers. In this sense, the decision supports the long-held prosecution strategy of keeping the prosecution history file thin.

The Federal Circuit then offered its own broader construction of the term and remanded the case for reconsideration.


The United States District Court for the Central District of California granted summary judgment of noninfringement to the defendants (Mako Products, Inc.; Air Sea Land Productions, Inc.; CineVideoTech, Inc.; Spectrum Effects, Inc.; Blue Sky Aerials, Inc.; Jordan Klein’s, Sr.; Jordan Klein’s, Jr.; and Oppenheimer Cine Rental, LLC) on the patent owned by David Grober and Voice International, Inc. (“Appellants”). Several defendants cross-appeal the district court’s denial of attorney’s fees. For the reasons recited below, this court affirms-in-part, vacates-in-part, and remands to the district court.

In 2006, David Grober won an academy award for the best technical achievement of the year for his “perfect horizon” camera stabilization head. The camera head is designed to compensate for motion during land, air, and sea operations of a camera. Grober’s patent No. 6,611,662 covers the camera head and is the subject of this appeal.

This case is like many that involve parallel legal proceedings. Grober filed an infringement action in 2004, Mako then filed an inter partes reexamination request – asking the USPTO to take a fresh look at the patent. The district court stayed the litigation until 2006. At that time, the court became antsy and reopened the case. After claim construction, the district court ruled that the accused products did not infringe the asserted claims and dismissed. Later, during the course of the appeal, the USPTO finally decided the reexamination by confirming the patentability of the asserted claims.

The court finds no error in the district court’s personal jurisdiction determinations. Appellants did not show that the Kleins or Oppenheimer performed any  relevant activities to establish general or specific personal jurisdiction. This court concludes that the district court properly declined personal jurisdiction over the Kleins and Oppenheimer.

The court vacates the district court’s claim construction and vacates the grant of summary judgment for non-infringement. This court remands for further proceedings. Finally, this court affirms the district court’s personal jurisdiction determination.

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