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,...