Wacom Loses Request for Reconsideration of Claims Construction Order

I posted here about the claims construction order issued by Judge Bryan in the Wacom v. Hanvon litigation. This case involves several patents covering electronic pen and tablet technology. Wacom had moved for reconsideration of the Judge Bryan's claims construction order arguing manifest and "pervasive" errors of law. In essence, Wacom asserted that the order erroneously "put the patent invalidity cart before the claim construction horse" by construing the claims to "preserve their validity." Judge Bryan denied the motion.

From Judge Bryan's Order:

"Plaintiffs argue that the Court made manifest and pervasive errors of law by requiring Plaintiffs to prove that their proposed constructions for multiple means-plus-function claims were valid. Dkt. 113 at 4-5. Plaintiffs assert “that the ‘doctrine of construing claims to preserve their validity . . . has no applicability’ except where the claim is ambiguous even after applying all of the tools of claim construction.” Dkt. 113 at 4 citing Phillips v. AWH Corp., 415 F.3d 1303, 1327-8 (Fed. Cir. 2005). However, “[t]he applicability of the doctrine [of construing claims to preserve their validity] in a particular case therefore depends on the strength of the inference that the [Patent and Trademark Office (“PTO”)] would have recognized that one claim interpretation would render the claim invalid, and that the PTO would not have issued the patent assuming that to be the proper construction of the term.” Id. at 1328. For the ‘553 Patent, Plaintiffs’ proposed means-plus-function constructions were so limited, vague, and
unsupported by the weight of intrinsic and extrinsic evidence in the record that a brief discussion of invalidity was required. Moreover, Plaintiffs were consistent in advancing the same limited arguments and unsupported constructions for the means-plus-functions limitations in the remainder of the asserted patents."


WacomOrderDenyingReconsideration.pdf