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Case Dismissed After Claims Upon Which Lawsuit Was Initiated Were Cancelled During Re-Examination

Defendant Extended Disc North America, Inc. (“EDNA”) filed a motion for summary judgment of non-infringement and invalidity, and, alternatively, a motion to dismiss against plaintiff Target Training International, Ltd.’s (“TTI”). TTI had filed its complaint for patent infringement against EDNA on September 17, 2010, alleging that EDNA directly infringed at least Claim 1 of the patent-in-suit by performing the methods claimed in the patent and by using or selling services that use the methods claimed in the patent.

Extended DISC International, Ltd. (“EDI”) filed a request for ex parte reexamination of the patent-in-suit with the United States Patent & Trademark Office (“PTO”). EDNA moved to stay the case pending the outcome of the reexamination. The court initially denied the motion to stay. On January 6, 2012, the PTO issued a final office action rejecting all of the claims in the patent-in-suit. The court subsequently issued an order staying the case until the PTO concluded reexamination and a certificate of reexamination was issued.

While the case was stayed, the PTO determination that all claims of the patent were invalid was appealed to the Patent Trial and Appeals Board (“PTAB”), which affirmed the PTO’s determination that all of the original claims were invalid. TTI filed an appeal to the Federal Circuit , which then affirmed the PTAB’s decision.

EDNA then moved for summary judgment, arguing that it could not, as a matter of law, infringe any of the invalid and now-canceled claims. In response, TTI filed a notice of reexamination certificate and request for scheduling conference, noting that new claims were added to the patent and that the patent case should proceed.

EDNA argued that in order to give full effect to the PTO’s decision, the court must enter judgment in its favor and find all the asserted claims invalid, and it argued, in the alternative, that the court must dismiss the case under the rule set forth in Fresenius USA. Fresenius USA, Inc. v. Baxter Int’l, Inc., 721 F.3d 1330, 1340 (Fed. Cir. 2013) (in patent cases, “when a claim is cancelled, the patentee loses any cause of action based on that claim, and any pending litigation in which the claims are asserted becomes moot.”).

TTI argued that EDNA’s reliance on Fresenius is misplaced because Fresenius was a declaratory judgment case seeking invalidation of specific claims and the defendant counterclaimed for infringement. TTI additionally attempted to distinguish Fresenius because new claims were added.

The district court then agreed that the complaint is for infringement of the patent, in general, and, with the exception of a passing reference to infringing on at least Claim 1, does not specify the claims. But because none of the new claims were even part of the patent when the complaint was filed, the district court concluded that “TTI obviously was not alleging that EDNA was infringing on the new narrower claims in the reexamined patent. Moreover, the court agrees with EDNA’s contention that the disclosure pursuant to Rule 3-1 of the Rules of Practice for Patent Cases in the Southern District of Texas binds TTI to its preliminary infringement contentions at this point unless TTI seeks leave of court to amend the contentions and has good cause for an amendment. See Rules of Practice for Patent Cases in the S.D. Tex. Rules 3-1, 3-6, 3-7. Since TTI’s preliminary infringement contentions indicate EDNA infringed on claims 1-2 and 5-11, there is no claim available for infringement of the newly added claims.

Accordingly, the district court dismissed the complaint as moot.

Target Trading International, LTD v. Extended Disc North America, Inc., Case No. H-10-3350 (S.D. Tex. June 1, 2015)

The authors of are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Stan Gibson at 310.201.3548 or