It is not uncommon for the defendant in a patent infringement action to move for a summary judgment of invalidity of the patent-in-suit. It is, however, apparently unique for the plaintiff to do so. In Re Acacia Media Technologies Corp.
Acacia filed more than twenty (20) suits alleging infringement of various claims of five patents, all of which were based on the same specification. The various cases were all transferred to the Federal District Court for The Northern District of California for proceedings under the Multi-District Litigation Rules.
There followed six (6) claim construction rulings. The Court ruled that two of the claim terms were fatally indefinite. Acacia concluded that the Court’s constructions were fatal to its case, as they rendered all of the asserted claims invalid as a matter of law.
Therefore, Acacia moved for summary judgment of invalidity of its own patents, with the avowed intention of thereafter appealing this decision. The Court, on hearing this, expressed doubt that Acacia could appeal the grant of its own motion.
The defendant solved this conundrum by bringing its own summary judgment motion, which was granted by the Court. Acacia will, apparently, appeal this decision.
THE LESSON TO BE LEARNED: A family of patents, where all of the claims include the same claim terms, and stand or fall together, may not be any better than a single patent; if you prosecute multiple continuations, try to vary the claim terms.