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  • The opinions, commentary and characterizations provided to this online forum by the authors and moderators are provided for encouraging discussion, thought and debate on important post grant issues. These postings are in no way representative of the opinions of Oblon Spivak et al., or its clients.

CAFC Finds Intervening Rights Created by Post Grant Disclaimer

Posted On: Sep. 27, 2011   By: Scott A. McKeown
Crossing out Plan A and writing Plan B on a blackboard.
Reexamination Disclaimer Effectively Amends Claims Surrendering $29 Million Damage Award

During a post grant proceeding, an amendment of an originally issued claim could create an intervening rights defense for infringers. That is to say if the amended or new claim introduced by the post grant proceeding is not substantially identical in scope relative to a previously issued claim, potential infringers of the amended/new claims may be provided with an absolute and/or equitable intervening rights defense (35 USC § 252). Of course, the conclusion as to whether or not a claim change in patent reexamination/reissue will result in the an intervening rights defense is far from a straightforward determination.

Yesterday, the CAFC considered whether or not intervening rights are created for a claim that is not literally amended in a post grant proceeding by a change in verbiage, but instead, changed in scope by operation of Patentee disclaimer. This “amended in effect” theory has shown up in at least one other case as of late and is likely to gain considerable traction going forward thanks to yesterday’s CAFC decision.

In Marine Polymer Technologies, Inc. v. HemCon, Inc. (here), the CAFC Court considered the patent reexamination of 6,864,245. The claims of the ‘245 Patent relate to a polymer useful in the treatment of wounds. The base claims of the patent recited that the claimed polymer be biocompatible. The specification explained four tests that would aid in determining an acceptable degree of biocompatibility, the test results ranging from zero (no detectable biological reactivity) to two (mild reactivity).

The claims were initially rejected in reexamination on the basis that the claim terminolgy biocompatible embraced a range that included no detectable biological reactivity (zero) to mild reactivity (1-2). The USPTO explained that several dependent claims recited the explicit range (1-2) for mild activity.

In response, the Patentee cancelled the dependent claims, and the USPTO confirmed the base claim without amendment. Prior to the termination of the reexamination, a parallel litigation concluded in a permanent injunction and a $29 million dollar damage award for the Patentee. 

In determining that interveing rights applied, the CAFC explained: 

We see no reason why this rule, giving effect to disclaimer of claim scope during reexamination or reissue, should not also apply in the context of intervening rights. In fact, a contrary rule would allow patentees to abuse the reexamination process by changing claims through argument rather than changing the language of the claims to preserve otherwise invalid claims and, at the same time, avoid creating intervening rights as to those claims. Therefore, if the scope of the claims actually and substantively changed because of Marine Polymer’s arguments to the PTO, the claims have been amended by disavowal or estoppel, and intervening rights apply. This is so even though Marine Polymer did not amend the language of its claims on reexamination.

In his dissent, Judge Lourie advanced a strict view of the statute, and argued that the statutory language is limited to actual changes in claim language.

Going forward, it is expected that this “amended in effect” theory will become a favorite of defendants on the wrong side of a post grant outcome of the USPTO. Whether or not the case will be found to apply outside of the unique circumstances (dependent claim cancellations) considered to date is an open question.

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