–A Glitch in the Matrix?–

As noted in Part I of our series on intervening rights, claim amendments in reexamination and/or reissue at the USPTO may create absolute and/or equitable intervening rights. Although the doctrine of intervening rights is codified as a component of reissue statute 35 U.S.C. § 252, reexamination statutes 35 U.S.C. § 307 (ex parte) and 35 U.S.C. § 316 (inter partes) incorporate the reissue statute in this regard.

35 U.S.C. § 252 Effect of Reissue.

The surrender of the original patent shall take effect upon the issue of the reissued patent, and every reissued patent shall have the same effect and operation in law, on the trial of actions for causes thereafter arising, as if the same had been originally granted in such amended form, but in so far as the claims of the original and reissued patents are substantially identical, such surrender shall not affect any action then pending nor abate any cause of action then existing, and the reissued patent, to the extent that its claims are substantially identical with the original patent, shall constitute a continuation thereof and have effect continuously from the date of the original patent. (emphasis added)

As can be appreciated, 35 U.S.C. § 252 states that substantially identical claims are treated no differently with respect to liability (damages) than original claims.[1]

Of course, this provision begs the question:

What types of claim changes can be made in patent reexamination such that the original claims are still considered substantially identical to the amended claims?

In Slimfold Mfg. Co., Inc. v. Kinkead Industries, Inc., 810 F.2d 1113, 1116, 1 USPQ2d 1563, 1566 (Fed. Cir. 1987) the CAFC affirmed a holding that amending a claim in reissue directed to a metal door, merely to provide antecedent basis for the “collar” element already recited in the claim, did not substantially amend the claim. The Court was not persuaded by the defendant’s argument that the Examiner had insisted that the lack of antecedent basis rendered the claim “vague and indefinite” because it was “impossible to determine whether ‘said collar’ is or is not an element . . . and if it is, how it relates to other elements.” The defendant further argued that the amendment was made in response to a 35 U.S.C. § 112, second paragraph, rejection, and was thus necessarily substantive, and that the patentee “so conceded when it changed the claim.”

Of course, 112 rejections of original claim language are not proper in reexamination (MPEP 2258), still in view of Slimfold Mfg., amending a claim merely to address cosmetic matters of form would probably not be interpreted as “substantially” amending the claim in the context of intervening rights.

Further, in Laitram Corp. v. NEC Corp., 952 F2d 1357, 21 USPQ2d 1276 (Fed. Cir. 1991), the Court held that: When claims are amended during reexamination following a rejection based on prior art, the claims are not deemed substantially changed as a matter of law. There is no per se rule. To determine whether a claim change is substantive it is necessary to analyze the claims of the original and the reexamined patents in light of the particular facts, including prior art, the prosecution history, other claims, and any other pertinent information.

The Laitram court also cited Tennant Co. v. HakoMinutman, Inc., 878 F2d 1413, 1417, 11 USPQ2d 1303, 1306-07 (Fed. Cir. 1989) where “the court held that a claim made more definite by adding a term from the specification, without change in scope, is not substantially changed, and the claims are “legally identical.” (emphasis added)

From these cases, it appears that courts will decide the issue of substantial identity in the context of intervening rights using a case-by-case analysis, based on a claim comparison made in light of the specification, the prosecution history, other claims, the prior art, and even extrinsic evidence, such as expert.

With the surge in patent reexamination concurrent with litigation, the Federal Circuit’s intervening rights jurisprudence appears to be presenting a very interesting scenario with regard to the different claim interpretation standards of the two forums.

Consider the following, simplified situation:

A patent is made subject to reexamination after a Markman Order has issued from a Federal District Court.  In the Markman Order, the legal meaning of “network” is defined as an ethernet network based upon the context of the specification, prosecution history, etc. Immediately after the Markman ruling, the case is stayed pending the outcome of reexamination proceedings. Of course, as stated in In re Trans Texas Holdings, the USPTO does not have to follow the Markman decision, and, instead, utilizes a broadest reasonable claim interpretation to arrive at a more general interpretation of “network.” Let us also assume that “ethernet network” is distinguishing over the prior art considered during the reexamination proceeding. Rather than spend years appealing the reasonableness of the broader interpretation in reexamination, delaying the district court case, the Patent Holder simply amends the claims to recite “ethernet network”

In such a case, it can certainly be argued that the amended claims are “legally identical” to the originally issued claims as defined in the Markman Order. To be sure, the court decision effectively defined the term “network” as including the ethernet feature. 

Can the court justify the application of intervening rights in the above scenario?  Or, is there a glitch in the matrix in store for defendants?


[1] The doctrine of provisional rights, as created by patent application publication, adopts the intervening rights standard. See the House of Representative Report 105-39 accompanying H.R. 400, the “21ST Century Patent System Improvement Act”, March 20, 1997. The provisional rights provision proposed in H.R. 400 was identical in substance to new 35 U.S.C. § 154(d). Consequently, the legislative history of H.R. 400 for that provision is relevant to interpreting 35 U.S.C. § 154(d).