by Dennis Crouch
Disney v. Rea (Fed. Cir. 2013)
Disney's Patent No. 5,963,915 covers an internet purchase method. The patent was filed by Steve Kirsch and originally owned by his company InfoSeek that was purchased by Disney as part of what Wikipedia calls the "expensive failure" of Go.com.
The patent issued on October 5, 1999. On October 4, 2001 (less than two years later), the patentee filed a broadening re-issue application that claimed a one-click purchase method to rival that of Jeff Bezos. Over the next eleven yars, the patentee argued back-and-forth with the PTO examiners over a variety of patentability issues. In due course, the patentee kept the application alive by filing three requests for continued examination (RCEs) and one administrative Appeal along with more than 100 different patent claims. After losing at the BPAI, Disney then filed a civil action under 35 U.S.C. 145, asking the district court to order the USPTO to issue the patent. However, Federal Judge Brinkema sided with the USPTO and found that the claims as presented were invalid. Disney then appealed to the Federal Circuit.
Now, Disney and the USPTO have settled the appeal with the agreement that Disney will drop its appeal of pending claims so long as the USPTO (1) allows Disney to file another RCE in the case and (2) considers amended claims presented by Disney in a manner "consistent with the district court's decision" and considering the evidence presented at trial. As part of the settlement, Disney also agrees that it is not entitled to a patent on the claims that were currently on appeal and agreed to pay the ~ $100,000 in appellate costs spent by the US Government.
In a joint brief, the parties suggest that Disney could still file a broadening continuation reissue application (while the civil action and related appeals are still pending) but could not file an RCE unless the case was remanded to the PTO. It is unclear to me what actual benefit Disney receives here from the remand/RCE instead of filing of a continuation.
The settlement document is not yet publicly available.