United States District Court, D. Colorado
WILEY Y. DANIEL, Sr., District Judge.
I. INTRODUCTION AND BACKGROUND
On March 12, 2013, the United States Patent and Trademark Office ("PTO") issued a Non-Final Office Action finding all of Plaintiff Edisync's Patent No. 5, 799, 320 ("320") claims unpatentable. (ECF No. 312-1). Regarding the claims asserted against Defendants, the PTO found that U.S. Patent No. 4, 939, 509 (the Bartholomew patent) anticipated independent claim 21 (ECF No. 312-1, ¶¶ 112-114) and dependent claim 22 (¶ 126), and that dependent claim 23 was obvious in light of the Bartholomew patent combined with other prior art references. (¶¶ 183-186). The PTO gave Plaintiff two months to respond to the rejection. (ECF No. 312-1 at 3). On April 10, 2013, I stayed this case pending the outcome of the latest reexamination to gain the benefit of the PTO's expert opinion regarding 320's validity. (ECF No. 322 at 4).
On August 23, 2013, the PTO issued an Office Action reinstating the previously-cancelled claims of Plaintiff Edisync's "320 Patent. (ECF No. 324-1). In light of the most recent findings of the PTO in the Office Action, I reopened this patent infringement case. On November 20, 2013, I held a status conference and heard argument from both parties as to how this matter should proceed. I ordered the parties to meet and confer and submit a proposed case management order that included neutral, balanced language amending my prior Markman order (ECF No. 258) to reflect the PTO's rulings, orders and changes to the claim construction based on the most recent Office Action dated August 23, 2013. Unfortunately, the parties were unable to agree on such language, so I now take on this task. Thus, the purpose of this Order is to modify, limit and narrow my June 15, 2012 Markman order in light of the PTO's most recent Office Action, which I find significantly narrowed the scope of 320. Unless otherwise stated in this Order, I find that where there is a conflict between the PTO's conclusions in the Office Action (ECF No. 324-1) and my Markman order (ECF No. 258), the Office Action controls.
In its latest reexamination of 320, the PTO reinstated most of 320's amended claims, including all three claims being asserted against Defendants. (ECF No. 324-1, ¶ 4). Specifically, the PTO agreed with Plaintiff that the prior art did not teach 320's structure of a "multitasking processing means" ("MPM") for "coordinating editing" and "coordinating data transfer" found in each of 320's independent claims. (ECF No. 324-1, ¶¶ 42-46). Importantly, the PTO reached this conclusion by adopting for every independent claim a precise construction of MPM that avoids the prior art by virtue of a single limitation: Algorithm FIG 3A. Id.
Because the PTO relied upon Algorithm FIG 3A to distinguish 320 from the prior art ( Id. ) and also found that the specification of 320 failed to support the existence of an embodiment lacking Algorithm FIG 3A (ECF No. 324-1, ¶¶ 30-38), it found Algorithm FIG 3A to be a necessary component of the MPM in all embodiments of 320. (ECF No. 324-1, ¶ 38) ("Accordingly the Examiner finds that all steps of FIG 3A are necessary, for each embodiment...."). See also ¶ 40 ("[T]herefore the Examiner concludes that the minimum corresponding structure for the MPM includes the algorithm of FIG 3A for all embodiments."). The PTO's reexamination of 320 concludes:
Regarding independent claims 21, 30, 40, 45, 46, 49, and 50, the prior art of record fails to teach a multitasking processing means (MPM) having a corresponding structure consisting of Structure A or Structure B described below. Note that the identified structures below include the algorithm of FIG 3A of 
Structure A: (Multitasking Hardware and Algorithm of FIG 3A )
[H1] a CPU capable of executing a multi-tasking operating system;
[H1 a] a multi-tasking operating system;
[H2] an input-output processor, and
[H3] one or more memory devices:
[S] Process of FIG 3A of the ...