The PTO’s differential treatment of different claims can be used to “provid[e] the district court with the expert view of the PTO” in construing those claims that survive examination.
Background / Facts: The patent at issue here covers a system of mass messaging in which a message is sent to one or more communication gateways that forward that message to individual users. The system allows many recipients to receive that message without overloading any one communication point. Following a concurrent reexamination at the PTO, the remaining independent claim (claim 12) required the communication gateways to send a common received gateway message directly to the end users, in contrast to the further formatting of user-specific messages at issue in the independent claim (claim 1) that was canceled by the PTO in view of prior art.
Issue(s): Whether construing the remaining independent claim to cover individual delivery of user-specific messages would impermissibly make the transmission limitation mirror the canceled independent claim’s handling of the gateway message.
Holding(s): Yes. “[T]he examiner’s reasons for differentiating claim 1 and claim 12, while not dispositive, can be helpful in determining the meaning of the claim terms. Reexaminations can ‘provid[e] the district court with the expert view of the PTO (when a claim survives the reexamination proceeding).’ … The examiner differentiated claim 1 from claim 12 because, unlike claim 1 where a new second message was created from the gateway message and sent to the end users, claim 12 ‘transmitt[ed] the gateway message to the user,’ and that limitation was not taught in [the prior art]. The examiner’s statements during the reexamination support the district court’s construction of the transmission limitation.”