Judge: Rodney Gilstrap
Holding: Motion for Summary Judgment of Noninfringement DENIED
Defendant Digital River sought summary judgment of noninfringement claiming that Plaintiff DDR made statements to the USPTO during reexamination to avoid prior art which it contended precluded the infringement theories that DDR now asserted. After considering the parties' written submissions, analyzing the complete reexamination file, and hearing argument on the issue at both pretrial conferences, Judge Gilstrap concluded that DDR’s statements, while initially appearing to support Digital River’s arguments for prosecution history estoppel, "lose much of their persuasive force when read within the full context of the reexamination file. Within the context of the entire dialogue between DDR and the USPTO, it becomes apparent that DDR did not limit the claims to require three separate parties or entities, but rather DDR laid out a different premise to overcome Arnold, i.e.: that the outsource provider must be independent from the host and merchant – nothing more. This was DDR’s key distinction over Arnold." The Court went on to observe:
When viewed as a whole, the reexamination file shows that there is no clear and unambiguous disavowal of claim scope that would preclude the two-party embodiment expressly disclosed in the specification. Without a review of the full reexamination file, it is arguably plausible that Digital River’s position is correct. However, employing the same exegesis used by scholars to understand everything from Shakespeare to the bible, the Court reaffirms that context matters. Reading the full reexamination file as opposed to the isolated statements cited by Digital River takes this reader to a different conclusion altogether.
(Emphasis in original).
Accordingly, employing the same exegesis used by scholars to understand everything from Shakespeare to the bible, Judge Gilstrap concluded that the motion did present a question of law as to claim construction, but that "the Court identifies no clear disavowal of claim scope in the reexamination history that would preclude a finding of infringement simply because one party plays the dual role of host and merchant." The Court therefore rejected Digital River’s argument, as a matter of claim construction, that the claims of the asserted patents cannot be infringed by a “two-party” system where one party is the e-commerce outsource provider and another party serves the dual roles of host and merchant.