Case Stayed Pending Reexam of Unasserted Claims

Posted on January 25, 2010 by R. David Donoghue

Card Activation Techs. V. Bebe Stores, Inc., No. 09 C 406, Slip Op. (N.D. Ill. Nov. 20, 2009) (Gottschall, J.).

Judge Gottschall stayed the case pending reexamination of plaintiff's patent. The fact that the asserted claims were not being reexamined did not weigh against a stay. The reexamined claims were narrower than the asserted claims. So, if the narrower claims were rejected the broader claims could be found invalid as well. And all of the claims used similar language. As a result, the reexam's prosecution history would, at a minimum, be pertinent to the case. And delay caused by a stay would not prejudice plaintiff because it could be compensated with money damages. Additionally, the Court allowed either party to move to begin full or limited discovery at a status conference eight months after the opinion issued, if the reexam was still pending at that time.

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Means Plus Function Structure May be Inferred by One of Ordinary Skill

Posted on April 8, 2008 by R. David Donoghue

Card Activation Techs., Inc. v. Barnes & Noble, Inc., No. 07 C 1230, Slip Op. (N.D. Ill. Mar. 18, 2008) (Gottschall, J.).

Judge Gottschall denied defendants' motion for summary judgment of invalidity. Each of plaintiff's independent claims – covering a counter-top terminal for processing debit card payments – included a “telecommunications means” limitation. The parties agreed that “telecommunications means” was a means plus function limitation. Defendants argued that the “telecommunications means” was indefinite because the patent's specification did not recite any corresponding telecommunications structure, such as a modem. The Court held that the specification did not disclose any specific telecommunications structure. But the Court held that no structure was required, where one of ordinary skill in the art would know what the structure was based upon the specification, citing Aristocrat Tech. Australia PTY LTD v. Multimedia Games, Inc., __ F.3d __, 2008 WL 484449 (Fed. Cir. Feb. 22, 2008). Relying upon plaintiff's expert, the Court held that based upon the specification, one of ordinary skill in the art would understand telecommunications means to be a modem.


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