When the complexities inherent in the English language meet the peculiarities of patent jargon, the result can be the bane of many unsuspecting patentees. While claim language is generally the product of the patentee alone, the patentee’s drafting efforts are sometimes aided by the examiner. Usually, such collaborative efforts are constructive. On occasion, however, these efforts result in confusion, not clarity. In this case, there were two such occasions. The first was during the original prosecution—when the patentee authored and the examiner allowed a claim with an arguably ambiguous limitation. The second was during reexamination—when the patentee and the examiner clarified the claim but failed to make an adequate record explaining the rationale for the amendment. Careful and straightforward claim drafting by prosecuting attorneys and agents, and rigorous application by examiners of the statutory standard to particularly point out and distinctly claim the subject matter regarded to be the invention, see 35 U.S.C. § 112, ¶ 2 (2000), serve an important public notice function. Here, the public notice function was not well served. Indeed, the controversy in this case might have been avoided had the claims been presented differently and accepted by the examiner only after more careful scrutiny.
In this action, Predicate Logic, Inc. (“Predicate”) brought suit against Distributive Software, Inc. (“Distributive”) for infringement of U.S. Patent No. 5,930,798 (the “’798 patent”). The ’798 patent relates to measurement and analysis technologies for use in software development. During the litigation, Distributive requested ex parte reexamination of the ’798 patent, and the claims were allowed as amended during reexamination. Distributive then argued to the district court that the asserted claims were invalid because the amendment during reexamination improperly broadened the claims. The district court agreed and granted Distributive’s motion for summary judgment of invalidity. Predicate Logic, Inc. v. Distributive Software, LLC, No. 01-CV-1951, slip op. at 17 (S.D. Cal. Jan. 25, 2007) (“Jan. 25 Op.”); Predicate Logic, Inc. v. Distributive Software, LLC, No. 01-CV-1951, slip op. at 7-8 (S.D. Cal. July 12, 2007) slip op. at 7-8 (“July 12 Op.”). Because we disagree with the district court’s conclusion that the amendment substantively changed the scope of claim 1 of the ’798 patent, we reverse and remand.
