By Phil Shelton* and Carl Kukkonen –
In Linksmart Wireless Tech., LLC v. Caesars Entm’t Corp., Case No. 2:18-cv-00862-MMD-NJK (D. Nev. May 8, 2020) the Court addressed disputed claim terms in U.S. Reissued Patent No. RE46,459 (the “’459 Patent”), Linksmart had alleged was infringed by Defendants Caesars Entertainment Corporation, Golden Nugget, Inc., Landry’s Inc., Las Vegas Sands Corp., MGM Resorts International, and Wynn Las Vegas LLC. The ‘459 Patent reissued from U.S. Patent No. 6,779,118 (the “‘118 Patent”). Both the ‘459 Patent and the ‘118 Patent were previously litigated, including a decision on May 14, 2019, by the Patent Trial and Appeal Board (“PTAB”) to deny an Inter Partes Review (“IPR”) proceeding filed by Panasonic Avionics Corp (the “Panasonic IPR”) regarding the ’459 Patent.
The ’459 Patent is directed towards a system that includes a “redirection server,” which can be programmed to mediate a user’s access to the internet. The Plaintiff alleged that Defendants infringed the ‘459 Patent because Defendants utilize systems that direct guests to a login page the first time a guest uses WiFi. Before addressing the alleged infringement, the Court here addressed the claim construction to determine the scope and meaning of the disputed claims.
In constructing claims, a court is to place emphasis on intrinsic evidence and consider three sources: (i) the claims, (ii) the specification, and (iii) the prosecution history. Under the “doctrine of prosecution disclaimer,” clear and unambiguous arguments made during prosecution may serve to narrow the scope of otherwise broad claim language. See Omega Eng’g, Inc, v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003). The Federal Circuit has extended this doctrine to statements made during IPR proceedings. See Aylus Networks, Inc. v. Apple, Inc., 856 F. 3d 1353, 1362 (Fed. Cir. May 11, 2017 (discussed here).
One of the disputed terms in the present claim construction hearing was the term “redirection server.” Defendants argued that the term means “a server configured to redirect a user to a location on the public network that is different from the network location in the user’s request” (emphasis added). Linksmart at 5. However, Plaintiff argued for a broader meaning allowing for redirection of a user’s request to either a public or private network location. Specifically, Plaintiff proposed the following claim construction: “a server logically located between the user’s computer and a network that controls the user’s access to the network and is capable of redirecting a user to a network location that is different from the network location in the user’s request.” Id. This distinction was important because the Defendant’s system directed guests to a private network.
Defendants argued that not only was there no support in the intrinsic record for redirection to a private network, but that Plaintiff’s own statements before the PTAB in the Panasonic IPR had distinguished the ‘459 patent from prior art on the basis that it redirects users to other locations on the public internet. The Court examined Plaintiff’s successful arguments made in resisting the institution of the Panasonic IPR, and found that Plaintiff had argued that “the redirection server redirects the user from one internet location—or public—location to another internet location.” Id. at 8. Ultimately, the Court agreed with the Defendants and found that Plaintiff had disclaimed the broader claim construction in the arguments it made in the Panasonic IPR.
In sum, the Court concluded that Linksmart “cannot have it both ways,” and had disclaimed the construction it sought here by its own arguments made before the PTAB in the Panasonic IPR.
*Phil Shelton is an IP Legal Intern in Jones Day’s San Diego Office