Using IPR To Trigger Prosecution Disclaimer

A recent district court decision found prosecution disclaimer stemming from statements by a patentee distinguishing its inventions from the prior art when opposing inter partes review. See Game & Tech. Co. v. Blizzard Entm’t, Inc., 2018 U.S. Dist. LEXIS 58424 (C.D. Cal. Apr. 4, 2018). As alleged infringers are increasingly filing petitions for inter partes review of patents asserted against them, the case illustrates how to use statements made by a patentee to oppose inter partes review against them in a related district court patent litigation.

In Blizzard Entm’t, Game and Technology Co. Ltd. (GTCO) sued the defendant game developer, alleging that the defendant’s manufacture, sale, and distribution of online games infringed three patents: U.S. Patent No. 8,035,649, 8,253,743, and 7,682,243. After the Court transferred the case from the Eastern District of Texas to the Central District of California, the defendant petitioned for IPR of all patents-in-suit and moved to stay the action pending inter partes review. The Court stayed the case pending inter partes review.

In March 2018, the Patent Trial and Appeal Board (PTAB) issued a decision concerning the ‘743 patent, finding all claims unpatentable under 35 U.S.C. § 103. As to the ‘649 and ‘243 patents however, the PTAB denied institution of an IPR in February and March 2017, respectively. Nevertheless, the accused infringer was able to use statements made by the patentee to the PTAB during those proceedings to support its construction of ‘649 patent claim terms “first frame rate,” “second frame rate,” and “rendered/rendering” and ‘243 patent claim terms “pilot” and “unit.” The Court relied upon these statements in adopting the defendant’s proposed claim constructions.

For example, the ‘649 patent related to systems and methods for updating images on a screen. To distinguish two prior art references (Pose and Bowen) cited in a petition for inter partes review, the plaintiff represented to the PTAB that the first and second images were generated at different frame rates. The plaintiff further argued: “[n]either Pose nor Bowen disclose[d] that the first image and the second image are generated at different frame rates.” Blizzard Entm’t, 2018 U.S. Dist LEXIS 58424, at *14. “In light of Plaintiff’s disclaimer, the Court adopt[ed] [d]efendant’s proposed constructions requiring [] the ‘first frame rate’ and the ‘second frame rate’ [to be] generated at different frame rates.” Id. In doing so, the Court rejected the patentee’s argument that these statements could not constitute disclaimer because they were not expressly adopted by the PTAB in its decision denying institution of IPR. The Court relied on longstanding precedent Springs Window Fashions LP v. Novo Indus., L.P., 323 F.3d 989, 995 (Fed. Cir. 2003) and Greenliant Sys., Inc. v. Xicor LLC, 692 F.3d 1261, 1271 (Fed. Cir. 2012) including specifically, the statement in Greenliant Systems that “[i]t does not matter whether the examiner or the Board adopted a certain argument for allowance; the sole question is whether the argument was made.” Id. at 1271.

Likewise, the ‘243 patent related to a system and method for providing an online game. The court adopted defendant’s construction of the term “pilot” to mean “player-operated game character through which the player controls the motions of a separate unit” due to the patentee’s statement during the IPR that neither of two prior art references “disclose[d] any character that controls the motion of a mount.” Blizzard Entm’t, 2018 U.S. Dist. LEXIS 58424, at *31. It further construed the term “unit” based on the patentee’s argument to the PTAB that the term meant “either ‘a robot character or a vehicle character.’” Id. at *33.

While the Blizzard decision runs against a sea of decisions refusing to find prosecution disclaimer, it follows an important Federal Circuit decision holding that statements made by a patent owner during an IPR proceeding can support a finding of prosecution disclaimer, whether made before or after an institution decision. See Aylus Networks, Inc. v. Apple, Inc., 856 F.3d 1353, 1362 (Fed. Cir. 2017). The Blizzard decision is also noteworthy because while the failure to institute IPRs of the ‘649 and ‘243 patents could have initially been viewed as a loss—both IPRs were ultimately a win. They forced the patentee to take positions on claim scope not otherwise in the prosecution record, which the alleged infringer was then able to use to support its preferred claim construction.

Wendy R. Stein is a Director in the Gibbons Intellectual Property Department. She litigates patent infringement and other IP litigation in federal court, and has briefed repeatedly the issue of prosecution disclaimer in patent cases.
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