Substantially Identical…More than Meets the Eye!An interesting issue raised by any post grant claim amendment (e.g., patent reissue and/or patent reexamination) is: For a given claim, what is the degree of amendment (i.e., change in scope) that will exceed the “substantially identical” standard of 35 U.S.C. § 252?This threshold determination will determine the availability of past infringement damages for the amended/new claims, or whether a potential infringer may  avoid liability for past damages based on the doctrine of intervening rights. If claims, as amended in a post grant proceeding, are not substantially identical in scope relative to the previously issued claims, potential infringers of the amended claims may be provided with an intervening rights defense. Clearly, Patentees tend to argue that amended/new claims are substantially identical, while infringers argue that the claims are not substantially identical.Last week, the substantially identical standard of 35 U.S.C. § 252 was analyzed in Aspex Eyewear, Inc., et al., v Marchon Eyewear Inc., et. al., (SDFLA). Interestingly, the court found that claims changed/added in patent reexamination were in fact substantially identical to the previously issued claims.  Ordinarily this would be fantastic news for a Patentee, but for Aspex, it was the end of the road. As explained by the court, Aspex previously sued the defendants (Revolution and Marchon) for infringement of U.S. Reissue Patent RE37,545 (reissue of U.S. Patent 5,568,207). Claim 22 of the ‘545 patent was asserted against both defendants. In 2007, Revolution was found to infringe claims 22, effectively ending the case. Likewise, in 2008, Aspex settled with Marchon, dismissing their claims with prejudice.An unrelated third party requested ex parte patent reexamination of the ‘545 Patent in 2007. During the reexamination, previously re-issued claim 23 was amended and claim 35 was newly added. Upon completion of the reexamination, in 2009, Aspex once again sued Revolution and Marchon for infringement of amended claim 23 and new claim 35.The court found that the new features provided by amended claim 23 and new claims 35 were in fact already implied by the issued claims. Thus, the court determined that the claim changes resulted in a substantially identical claim scope to the previous version of the issued claims. Therefore, the court explained (decision here) that Aspex was barred from re-litigating these new claims against the previous defendants, reasoning:”Identical” does not mean verbatim, but rather means “without substantive change.” Slimfold Mfg. v. Kinkead Indus.810 F.2d 1113, 1115 (Fed. Cir. 1987). “Claims are not interpreted in a vacuum, but are part of and read in light of the specification.” addition of the words “having a horizontal surface” or “magnetic member surfaces” does not substantively change the scope of the original claim 23, but merely makes the claim more definite. .                     .                           .                           .The Revolution California Action was fully adjudicated on the merits. The dismissal release of the Marchon Settlement made clear that the settlement dismissed with prejudice as to any causes of action “any claim which could have been had by and between the Parties arising from or connected with” the Marchon California Action. Plaintiffs argue that it alleged legally separate causes of action in their complaint because claim 23 and claim 35 did not exist at the time the California Actions were being litigated. The reexamination of the ‘545 Patent does not entitle Plaintiffs to circumvent claim preclusion because the amended claims relate back to the original ‘545 Patent reissue date. (emphasis added)Interestingly, claim 23 was rejected as unpatentable in view of certain prior art during the patent reexamination. The claim was then amended to overcome the art of record with the above noted language; this fact was not analyzed by the court. As such, this case may be cited in the future for the proposition that–the amendment of a claim in patent reexamination to avoid the prior art does not necessarily equate to a substantial change in claim sco

An interesting issue raised by any post grant claim amendment (e.g., patent reissue and/or patent reexamination) is: For a given claim, what is the degree of amendment (i.e., change in scope) that will exceed the “substantially identical” standard of 35 U.S.C. § 252?

This threshold determination will determine the availability of past infringement damages for the amended/new claims, or whether a potential infringer may  avoid liability for past damages based on the doctrine of intervening rights. If claims, as amended in a post grant proceeding, are not substantially identical in scope relative to the previously issued claims, potential infringers of the amended claims may be provided with an intervening rights defense. Clearly, Patentees tend to argue that amended/new claims are substantially identical, while infringers argue that the claims are not substantially identical.

Last week, the substantially identical standard of 35 U.S.C. § 252 was analyzed in Aspex Eyewear, Inc., et al., v Marchon Eyewear Inc., et. al., (SDFLA). Interestingly, the court found that claims changed/added in patent reexamination were in fact substantially identical to the previously issued claims.  Ordinarily this would be fantastic news for a Patentee, but for Aspex, it was the end of the road.

As explained by the court, Aspex previously sued the defendants (Revolution and Marchon) for infringement of U.S. Reissue Patent RE37,545 (reissue of U.S. Patent 5,568,207). Claim 22 of the ‘545 patent was asserted against both defendants. In 2007, Revolution was found to infringe claims 22, effectively ending the case. Likewise, in 2008, Aspex settled with Marchon, dismissing their claims with prejudice.

An unrelated third party requested ex parte patent reexamination of the ‘545 Patent in 2007. During the reexamination, previously re-issued claim 23 was amended and claim 35 was newly added. Upon completion of the reexamination, in 2009, Aspex once again sued Revolution and Marchon for infringement of amended claim 23 and new claim 35.

The court found that the new features provided by amended claim 23 and new claims 35 were in fact already implied by the issued claims. Thus, the court determined that the claim changes resulted in a substantially identical claim scope to the previous version of the issued claims. Therefore, the court explained (decision here) that Aspex was barred from re-litigating these new claims against the previous defendants, reasoning:

“Identical” does not mean verbatim, but rather means “without substantive change.” Slimfold Mfg. v. Kinkead Indus.810 F.2d 1113, 1115 (Fed. Cir. 1987). “Claims are not interpreted in a vacuum, but are part of and read in light of the specification.” addition of the words “having a horizontal surface” or “magnetic member surfaces” does not substantively change the scope of the original claim 23, but merely makes the claim more definite. .                     .                           .                           .

The Revolution California Action was fully adjudicated on the merits. The dismissal release of the Marchon Settlement made clear that the settlement dismissed with prejudice as to any causes of action “any claim which could have been had by and between the Parties arising from or connected with” the Marchon California Action. Plaintiffs argue that it alleged legally separate causes of action in their complaint because claim 23 and claim 35 did not exist at the time the California Actions were being litigated. The reexamination of the ‘545 Patent does not entitle Plaintiffs to circumvent claim preclusion because the amended claims relate back to the original ‘545 Patent reissue date. (emphasis added)

Interestingly, claim 23 was rejected as unpatentable in view of certain prior art during the patent reexamination. The claim was then amended to overcome the art of record with the above noted language; this fact was not analyzed by the court. As such, this case may be cited in the future for the proposition that–the amendment of a claim in patent reexamination to avoid the prior art does not necessarily equate to a substantial change in claim scope.