Case: Cooper Notification, Inc. v. Twitter, Inc., No. 2012-1615 (Fed. Cir. Aug. 30, 2013) (non-precedential). On appeal from D. Del. Before Newman, Lourie, and Taranto.
Procedural Posture: Plaintiff Cooper sued defendants for infringement of a patent relating to mass electronic messaging. Defendants filed for reexamination of the patent. USPTO Examiner rejected the method claims and allowed the system claims. District court granted summary judgment of noninfringement of the system claims and dismissed the method claims with prejudice. CAFC affirmed.
- Claim Construction: CAFC agreed with the district court’s claim construction of the transmission limitation because it was supported by the claim language and the prosecution and reexamination histories. During reexamination, the Examiner interpreted the limitation of “transmission of gateway messages to users” as requiring the users to actually receive the gateway messages, in addition to the message contents. CAFC found that the district court had proper support in arriving at the same interpretation. CAFC noted that while the Examiner’s claim interpretations are not dispositive, they may be helpful to the district court’s claim construction.
- Timeliness of Supplemental Expert Reports: CAFC found that the district court did not abuse its discretion in denying Cooper’s supplemental infringement expert report because it was submitted after Cooper lost on summary judgment, Cooper had ample time and notice that it may need such expert reports when the Examiner made his interpretation of the claims during reexamination, which was prior to the summary judgment, and allowing Cooper to supplement its expert report after summary judgment would cause too much disruption and time.
- Dismissal of Claims with Prejudice: CAFC found that the district court properly dismissed with prejudice the asserted method claims that were rejected during reexamination. Cooper initially agreed to dismiss the claims and proposed a stipulation to defendants, upon which defendants relied. Even though Cooper later withdrew its stipulation, it conceded at trial that defendants would not be sued on those claims. CAFC found that the district court was well within its discretion to dismiss the claims with prejudice.
Taranto, concurring in part and dissenting in part:
- Claim Construction: The majority interpreted the claim limitation too narrowly. If the claim meaning is to be distinguished from the rejected claims, there are multiple possible interpretations. As such, the district court’s summary judgment of non-infringement is in error. Even with the majority’s interpretation of the claim limitation, because there are sufficient factual disputes relating to defendant’s system, the district court’s claim construction and summary judgment of non-infringement should be reversed.