CAFC: Notice Must Be Provided For JMOL When Factual Disputes Exist

Southwestern Bell Telephone Co. v. Arthus A. Collins, Inc. (2007-1577), May 27, 2008 (nonprecedential)

After a pretrial hearing, both parties briefed the district court on issues of prosecution history estoppel. The next day, in a telephone conference, the district court granted Southwestern Bell's motion in limine on prosecution history estoppel and also granted JMOL that one of the claim limitations ("randomly receive") was not literally present in the accused device. On appeal, Collins argued that the district court improperly ruled on noninfringement when it resolved the motion in limine on the limited issue of prosecution history estoppel.

The CAFC agreed with Collins:

The district court’s ruling cannot properly be considered one for judgment as a matter of law under Rule 50. Rule 50 only applies when a "party has been fully heard on an issue and there is no legally sufficient evidentiary basis for a reasonable jury to find for that party on that issue." . . . When the district court granted judgment "as a matter of law," trial had not even begun in this case. Collins had not been fully heard on the issue of the literal presence of the "randomly receive" limitation in the accused combination.

[I]n the Fifth Circuit, Rule 56(c) requires ten days notice to a non-moving party, even when summary judgment is granted sua sponte . . . This ten-day requirement is intended to allow the non-moving party "to make every possible factual and legal argument." . . . Collins did not receive ten days to make every possible factual and legal argument with respect to whether the accused combination literally satisfies the "randomly receive" limitation in claims 1-3 of the ’589 patent.

Prosecution History Estoppel - during prosecution, Collins stated in the record that amendments were made "to more particularly define the present invention and distinguish over the '621 reference." The CAFC noted that "[a]n amendment is directly, and not tangentially, related to patentability when an applicant’s narrowing additions to a claim along with an applicant’s own statements in the prosecution history indicate that the amendment was made to distinguish over a reference."

Reexamination for Improper Purpose - during reexamination of one of the patents-in-suit, Collins stated that additional amendments were made "to preclude any interpretation of the claims in accordance with the district court’s opinions . . . in the litigation with Nortel."

Under 35 U.S.C. § 305, a patent owner may propose an amendment to its patent to distinguish the claimed invention from the prior art or to respond to an adverse decision as to the patentability of one of the claims. Claim amendments during reexamination are limited to amendment in light of prior art raising a substantial new question of patentability. In this case, "Collins cannot use reexamination for the purpose of amending its claims to address an adverse claim construction . . . We therefore affirm the grant of summary judgment that claims 4-14 of the ’589 patent are invalid."