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The threshold to acquiring intervening rights by reexamination requires new or amended claim language
Bernadette McGann | March 21, 2012
Marine Polymer Technologies, Inc. v Hemcon, Inc. (en banc)
March 15, 2012
Panel: Rader, Newman, Lourie, Bryson, Gajarsa, Linn, Dyk, Prost, Reyna and Wallach (en banc)
Opinion for the court by Lourie. Rader, Newman, Bryson and Prost join in full and Linn joins in part II (Intervening Rights)
Opinion for the dissent by Dyk. Gajarsa, Reyna, and Wallach join in full and Linn joins in parts I-II (Claim construction, dismissing HemCon motion for JMOL and/or new trial)
Summary:
Based on statutory interpretation of 35 U.S.C. §307(b), the Majority held that the threshold requirement for acquiring intervening rights is that there must be amended or new claims that did not exist in the original patent but have been found to be patentable during reexamination. The CAFC held that amended means to make formal changes to the actual language of a claim. A claim is not amended merely because the scope of the claim has been altered by arguments presented during reexamination.
Tags: BernadetteMcGann > claim construction > damages > en banc > intervening rights > re-examination > reexamination
Will the Marine Polymer Expansion of Intervening Rights be Reversed?
Scott Daniels | January 30, 2012
A few days ago the CAFC issued a notice that it would review, en banc, last September’s 2-1 panel decision in Marine Polymer v. HemCon, specifically the holding that absolute intervening rights arise where a patentee narrowly construes its claims in reexamination, thereby “effectively amending” those claims, even without an actual amendment of the claims. See 35 U.S.C. §§ 252 and 307(b). Such intervening rights, of course, eliminate all damages for the period before the issuance of the reexamination certificate concluding the reexamination. Until Marine Polymer, only a single trial had found intervening rights derived from argument alone.
There was, however, a dissent by Judge Alan Lourie who did not accept the “amendment in effect” argument. For him, there is “threshold requirement in §§ 307(b) and 316(b) that intervening rights apply only to amended or new claims.” Since that threshold requirement was not satisfied, there could be no intervening rights, Judge Lourie argued.
CAFC Decision Reaffirms In Re Swanson while Dissent Raises Constitutional Questions Over Res Judicata and Issue Preclusion
Michael Caridi | December 14, 2011
In Re Construction Equipment Company, U.S. Court of Appeals for the Federal Circuit 2010-1507
Appeal from the United States Patent and Trademark Office, Board of Patent Appeals and Interferences.
(Reexamination No. 90/008,477)
Decided: December 8, 2011
__________________________
Summary
Court gives a brief precedential decision affirming a finding of obviousness for a much fought over patent. The decision is more a re-affirming of In re Swanson given the long litigation history of the patent-at-issue than a decision on legal merits of the BPAI’s finding of obviousness. The lengthy dissent of Judge Newman is highly critical of allowing a re-examination of a patent that had been hotly litigated for years in the judicial branch with an opposite outcome.
CAFC rejects BPAI’s “thrust of rejection” argument
Thomas Brown | December 1, 2011
IN RE STEPAN COMPANY
(Reexamination Nos. 90/006,824 and 90/007,619)
(CAFC, October 5, 2011)
(Precedential)
Before DYK, FRIEDMAN, and PROST, Circuit Judges. PROST, Circuit Judge.
Summary
Patentee appeals the Examiner’s final rejection on reexamination. On appeal, the BPAI affirms the Examiner’s obviousness rejection for essentially the same reasons, but treats the primary reference as prior art under §102(a) in contrast to the Examiner’s reliance on the primary reference as prior art under §102(b) in the Examiner’s answer. However, the BPAI does not issue a new ground of rejection, since the thrust of the rejection was the same as the Examiner’s rejection. The Patentee appeals to the CAFC asserting the need for a full and fair opportunity to litigate the BPAI’s actual basis of rejection. The CAFC rejects the BPAI’s thrust of the rejection argument, vacates the BPAI’s decision and remands with instructions to designate its rejection as a new ground of rejection.