Should the PTO’S Reexamination Analysis Impact ITC Cases?


Until now, the  CAFC has not answered the question of the level of consideration a court or the ITC should give to an earlier reexamination and the effect those reexamination findings should have in the present proceeding or investigation.  Scott Daniels, Partner at Westerman Hattori Daniels & Adrian and Practice Center Contributor, passed along this article discussing an investigation pending at the ITC wherein the Commission has raised this question.  Daniels weighs in on whether the CAFC will take this opportunity to answer this looming question.

In January U.S. International Trade Commission Administrative Law Judge Paul Luckern issued his initial determination (ID) finding that Kodak’s U.S. Patent No. 6,292,218 was obvious over the prior art and not infringed by Apple and RIM mobile telephones with digital cameras – these findings were contrary to an ID (by ITC ALJ Carl Charneski) in an earlier investigation that Kodak’s ‘218 patent was valid and infringed by mobile telephones from Samsung and LG.  This past Friday, the Commission announced that it would review Judge Luckern’s determination in favor of Apple and RIM.  As is customary, the Commission’s review focuses on specific aspects of Judge Luckern’s ID, asking the parties to address five specific legal issues – among them, the extent to which the ITC should consider reexamination proceedings (90/010,899) in its analysis of claim construction and validity issues.

The ITC does not have authority to award Kodak money damages for past infringement, even if it does determine that Kodak’s ‘218 patent is valid and infringed.  It can, however, stop infringing telephones from entering the United States and order Apple and RIM to stop selling infringing telephones already in the United States.  One official at Kodak has stated publicly that if the ITC rules in its favor against Apple and RIM, those companies would likely accept a license to the ‘218 patent, resulting in nearly $1 billion in royalties for Kodak.

The five legal issues raised by the Commission are, in order:

  1. Whether Kodak had an adequate opportunity to address the specific combination of prior art references relied upon by Judge Luckern;
  2. Whether Judge Luckern should have considered the claim construction adopted by the ITC’s ALJ in the earlier investigation of Samsung and LG telephones, and the effect that earlier claim construction should have;
  3. Whether Judge Luckern should have considered the PTO’s findings in its reexamination of the ‘218 patent, and the effect those reexamination findings should have in the present investigation of Apple and RIM telephones;
  4. Whether U.S. Patent No. 5,493,335 is prior art against Kodak’s ‘218 patent, as found by Judge Luckern; and
  5. How the ‘218 claim phrase “color pixel value” should be construed.

The question of the level of consideration a court or the ITC should give to an earlier reexamination has not been answered by the CAFC.  The present Kodak ITC investigation – because it is likely to go to the CAFC in view of its substantial commercial significance, and because the Commissioners have now focused on the ‘218 reexamination as one of five specific issues to be resolved – would seem to be an excellent opportunity for the CAFC to answer that question.

But when the Commissioners announce a review of an ALJ’s ID and pose specific questions to the parties, it is difficult to know whether the Commissioners intend to write a significant new opinion on one or more of those issues, or merely to tie up loose ends in the ID.  Unfortunately, I suspect that Friday’s announcement of review is an example of the latter.  Thus, the fourth issue raised by the Commissioners on whether the ‘335 is prior art, seems to be based on an obvious but inconsequential misstep in Judge Luckern’s ID (at page 71, where he states that the ‘335 patent is prior art because the ‘218 patent application was filed “more than one year after the filing [sic, issue] date of” the ‘335 patent).  It is easy to see the Commissioners adjusting Judge Luckern’s ID to address the other four questions as well.  For instance, the Commissioners could very easily find that he should have considered both Judge Charneski’s earlier ID and the PTO’s reexamination findings, but that such consideration would not have altered Judge Luckern’s conclusion that the ‘218 patent is invalid.

Certainly, I hope that I am proven wrong.

As for Kodak’s $1 billion case, my expectation from the five questions asked by the Commissioners is that they will affirm Judge Luckern’s ruling in favor of Apple and RIM.

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