Parallel Networks Licensing, LLC v. International Business Machines Corp.

83 F. Supp. 3d 571, 2015 U.S. Dist. LEXIS 32262, 2015 WL 1227968
CourtDistrict Court, D. Delaware
DecidedMarch 17, 2015
DocketCiv. No. 13-2072-SLR
StatusPublished
Cited by1 cases

This text of 83 F. Supp. 3d 571 (Parallel Networks Licensing, LLC v. International Business Machines Corp.) is published on Counsel Stack Legal Research, covering District Court, D. Delaware primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

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Parallel Networks Licensing, LLC v. International Business Machines Corp., 83 F. Supp. 3d 571, 2015 U.S. Dist. LEXIS 32262, 2015 WL 1227968 (D. Del. 2015).

Opinion

MEMORANDUM OPINION

ROBINSON, District Judge.

I. INTRODUCTION

On December 20, 2013, plaintiff Parallel Networks Licensing LLC (“plaintiff’) filed [573]*573the instant suit alleging infringement of U.S. Patent Nos. 5,894,554 (“the '554 patent”) and U.S. Patent No. 6,415,335 (“the '335 patent”) against International Business Machines Corporation, (“defendant”). (D.I.l) On February 12, 2014, defendant answered the complaint and counterclaimed for non-infringement and invalidity. (D.I.9) On February 20, 2014, plaintiff answered the counterclaims. (D.I.ll) Presently before the court is defendant’s motion for partial judgment on the pleadings. (D.I.50) The court has jurisdiction over this matter pursuant to 28 U.S.C. §§ 1331 and 1338(a).

II. STANDARD OF REVIEW

When deciding a Rule 12(c) motion for judgment on the pleadings, a district court must view the facts and inferences to be drawn from the pleadings in the light most favorable to the non-moving party. Green v. Fund Asset Mgmt., L.P., 245 F.3d 214, 220 (3d Cir.2001); Janney Montgomery Scott, Inc. v. Shepard Niles, Inc., 11 F.3d 399, 406 (3d Cir.1993). The motion can be granted only if no relief could be afforded under any set of facts that could be provided. Turbe v. Gov’t of the Virgin Islands, 938 F.2d 427, 428 (3d Cir.1991); see also Southmark Prime Plus, LP. v. Falzone, 776 F.Supp. 888, 891 (D.Del.1991); Cardio-Medical Associates, Ltd. v. Crozer-Chester Medical Ctr., 536 F.Supp. 1065, 1072 (E.D.Pa.1982) (“If a complaint contains even the most basic of allegations that, when read "with great liberality, could justify plaintiffs claim for relief, motions for judgment on the pleadings should be denied.”). However, the court need not adopt conclusory allegations or statements of law. In re General Motors Class E Stock Buyout Sec. Litig., 694 F.Supp. 1119, 1125 (D.Del.1988). Judgment on the pleadings will only be granted if it is clearly established that no material issue of fact remains to be resolved and that the movant is entitled to judgment as a matter of law. Jablonski v. Pan Am. World Airways, Inc., 863 F.2d. 289, 290 (3d Cir.1988).

III. DISCUSSION

Both patents-at-issue were placed into reexamination in 2007, during which plaintiff proposed a variety of amendments to the United States Patent and Trademark Office (“PTO”). (D.I. 55 at 4) After three ex parte reexamination proceedings, the PTO issued a reexamination certificate on July 24, 2012 for the '554 patent, stating that “[cjlaims 1-11 are cancelled [and] [n]ew claims 12-49 are added and determined to be patentable.” (D.I. 108, ex. 1 at A19-A21) New claims 12-49, as printed in the reexamination certificate, were the wrong set of claims.1 (D.I. 55 at 4) On October 2, 2012, the PTO issued a certificate of correction, replacing claims 12-49 with corrected claims 12-49.2 (D.I. 108, ex. 1 at A13-A18) The '335 patent was also [574]*574subject to three ex parte reexamination proceedings, after which the PTO issued a reexamination certificate on July 17, 2012, cancelling all 29 originally issued claims and adding new claims 30-85 which, again, were incorrect. (D.I.108, ex. 2, A43-45) The PTO then issued a certificate of correction on September 11, 2012, replacing claims 30-85 with corrected claims 30-85. (Id. at ex. 2, A35-A42)

In the case of an error made by the PTO, § 254 of the Patent Act provides:

Whenever a mistake in a patent, incurred through the fault of the Patent and Trademark Office, is clearly disclosed by the records of the Office, the Director may issue a certificate of correction stating the fact and nature of such mistake, under seal, without charge, to be recorded in the records of patents. A printed copy thereof shall be attached to each printed copy of the patent, and such certificate shall be considered as part of the original patent. Every such patent, together with such certificate, shall have the same effect and operation in law on the trial of actions for causes thereafter arising as if the same had been originally issued in such corrected form. The Director may issue a corrected patent without charge in lieu of and with like effect as a certificate of correction.

35 U.S.C. § 254.

The Federal Circuit has interpreted § 254, explaining that “[t]he certificate of correction is only effective for causes of action arising after it was issued.” Southwest Software, Inc. v. Harlequin Inc., 226 F.3d 1280, 1294 (Fed.Cir.2000). Moreover, §§ 254 and 2553 “deal only with the authority of the PTO to make prospectively effective corrections, and the PTO was given no authority to correct the claims retroactively.” Novo Industries, LP. v. Micro Molds Corp., 350 F.3d 1348, 1356 (Fed.Cir.2003). “For causes of action that arise before the correction becomes effective, the patent must be considered without the benefit of the certificate of correction.” Id. (citing Southwest, 226 F.3d at 1297). In the case at bar, plaintiff has asserted infringement based on the corrected claims, but seeks damages for infringement occurring prior to the date of correction by the PTO. Based on the statutory language, plaintiff may not recover damages prior to the date of correction.

Plaintiff contends that the court should judicially correct the patent claims (as the PTO did) and apply them retroactively to permit its requested damage award. The Federal Circuit has specified that “[ajlthough we conclude that Congress intended to preserve the authority of the district courts to correct errors, we do not think that Congress intended that the district courts have the authority to correct any and all errors that the PTO would [575]*575be authorized to correct under sections 254 and 255.” Novo, 350 F.3d at 1357. District courts may correct “obvious minor typographical and clerical errors in patents,” but “major errors are subject only to correction by the PTO.” Id. Therefore,

[i]n some circumstances the district court can correct errors retroactively. But the district court can correct an error only if the error is evident from the face of the patent. “A district court can correct a patent only if (1) the correction is not subject to reasonable debate based on consideration of the claim language and the specification and (2) the prosecution history does not suggest a different interpretation of the claims.”

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83 F. Supp. 3d 571, 2015 U.S. Dist. LEXIS 32262, 2015 WL 1227968, Counsel Stack Legal Research, https://law.counselstack.com/opinion/parallel-networks-licensing-llc-v-international-business-machines-corp-ded-2015.