Judge Sparks issued an order on April 26, 2011 in the Hydro-Quebec v. Valence Technology, Inc. (U.S. District Court for the Western District of Texas, Austin Division, Case No. A-06-CA-111-SS) patent infringement case accepting the Report and Recommendation of the Special Master on claim construction. The following is the Judge's conclusion:
As a general matter, this Court has simply not been convinced that the reexamined patents could possibly be interpreted to be as broad as the original filed patents.
The Fifth Circuit addressed the effect of reexamination in a patent/licensing agreement case discussing a patent which had been subject to a similar comprehensive reexamination. DuVal Wiedmann, LLC v. InfoRocket.com, Inc., 620 F.3d 496, 504 (5th Cir. 2010) citing Laitram Corp. v. NEC Corp., 163 F.3d 1342, 1348 (Fed. Cir. 1998). Much like HQ in this case, the patent holder in that case had to substantively amend and alter the claims of the patent in order to obtain a reexamination certificate. As the Court stated, "It is 'difficult to conceive' that a claim amended to avoid prior art could be substantively identical to the original claim." Id. In short, this Court adopts the logical conclusion that changes made during reexamination, in some respects even more forcefully than changes made during prosecution, may not be overturned in claim construction.
In closing, it is not the Court's job to make a poorly written patent into a model of clarity. When the specification includes typos and cannot be practiced as written, and despite the original examination and a re-examination errors still remain, the Court must do the best it can with the material it has. Despite this patent going through two rounds of examination at the PTO it still includes typos like "catrode," an unrealistic temperature of 70020 C, a formula which is not electroneutral, an embodiment in Example 2 which cannot be made following those instructions, a lack of clarity regarding the variables Mand N, and an expert indicating one of ordinary skill in the art would have to "call Dr. Goodenough," the inventor, to figure out the proper temperature and any other typos. Tr. vol. 1 at 166:19-170:9. Despite all of these, the special master's recommended constructions attempt to bring clarity to the terms used in light of such a wealth of changes during reexamination. Thus,
IT IS ORDERED that the recommended constructions of the Special Master are ACCEPTED.
Thanks to the reader who provided a copy of Judge Sparks' Order. Access Order here.