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Patent Law

: Patently Obvious

Settlement + Vacatur: Whitewashing an Invalidated Patent

By Dennis Crouch, Esq.

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In Gracenote, Inc. v. MusicMatch, Inc., the District Court (N.D. Cal. Judge Wilken) granted MusicMatch's motion for partial summary judgment – holding the claims of one of the patents invalid as anticipated. Within months, the parties settled (motivated in part by the anticipation of Yahoo!'s purchase of MusicMatch). As part of the settlement, MusicMatch agreed not to oppose vacatur of the summary judgment decision. On motion, the court did vacate its holding.

In its motion for vacatur, Gracenote indicated that it "intends to seek re-examination of the '593 patent." This result apparently made the vacatur appear more palatable and potentially allow Gracenote to achieve a narrower (but now valid) claimset. Gracenote wrote the following in its motion:

Gracenote hereby requests that the Court vacate its [Summary Judgment Order and] Reconsideration Order. As Gracenote has set forth in its various briefs filed with this Court, Gracenote believes that the Court erred in finding that xmcd and CDDB anticipate or render obvious certain claims of the '593 patent. Accordingly, Gracenote intends to seek re-examination of the '593 patent, and to submit evidence of xmcd and CDDB to the PTO. Gracenote will likewise submit the relevant orders of this Court to the PTO at that time. Accordingly, Gracenote respectfully requests that the Court vacate the above cited orders and allow the PTO to determine the relevance of xmcd and CDDB to the claims of the '593 patent. . . . Gracenote requests the orders be vacated in fairness so that it can pursue re-examination of the '593 patent before the PTO.

Although Gracenote seemingly promised to seek reexamination, no reexamination request has been filed in the six years since this case was decided. It is unclear to me whether that failure would rise to the level of contempt of court.

Notes:

Gracenote, Inc. v. MusicMatch, Inc., 2004 U.S. Dist. LEXIS 17617 (N.D. Cal. 2004).
Block Financial v. LendingTree (W.D. Mo. 2010).
File Attachment: GracenoteMotion.pdf (168 KB)
See also, Persistence Software, Inc. v. The Object People, Inc., 200 F.R.D. 626,627 (N.D. Cal. 2001) (vacating prior summary judgment motion of invalidity for the express purpose of allowing "future actions against third parties for patent infringement".); United States Gypsum Co. v. Pac. Award Metals, Inc., 2006 U.S. Dist. LEXIS 47237 (N.D. Cal. 2006) (vacating judgment that patentee was estopped from claiming infringement under the doctrine of equivalents due to prosecution history estoppel).

Full post as published by Patently Obvious on March 17, 2010 (boomark / email).