Rules to Implement Post Grant Proceedings to Add New Layer of Patentee Estoppel

The estoppel impact of inter partes patent reexamination (IPX) has long been a concern for third party requesters. Should an IPX requester fail in its attempt to invalidate a patent before the USPTO, the estoppel provisions preclude a subsequent attempt to invalidate the same patent in a district court (at least based upon patents and printed publications).

For the new post grant proceedings of the America Invents Act (AIA) the same basic concept exists for requesters― one bite at the apple. However, the estoppel is triggered substantially earlier. In post grant proceedings under the AIA estoppel under 35 USC 315 attaches upon the issuance of a final written decision, which should occur around a year and a half from the filing of the petition for review in a typical case. In contrast, IPX estoppel attaches only upon issuance of the reexamination certificate, after exhaustion of all appeals to Article III courts.

Perhaps even more significantly, the proposed rules to implement the Post Grant Review and Inter Partes Review proceedings add a new layer of estoppel against Patentees.

The impact of this proposed change would be devastating for large patent filers.

After a final written decision cancelling a claim the Patentee would be precluded from later obtaining any patent claim that could have been presented in the Post Grant Review (PGR) and Inter Partes Review (IPR) proceedings.More specifically, Rule 42.73 (d)(3) of the PTAB Rules of Practice provides as follows:

(3) Patent applicant or owner. A patent applicant or owner whose claim is canceled is precluded from taking action inconsistent with the adverse judgment, including obtaining in any patent:

(i) A claim to substantially the same invention as the finally refused or cancelled claim;

(ii) A claim that could have been filed in response to any properly raised ground of unpatentability for a finally refused or cancelled claim; or

(iii) An amendment of a specification or of a drawing that was denied during the trial proceeding.

The implications of this new Patentee estoppel could be significant for patents which have pending continuation applications. Under proposed Rule 42.73 when one or more of the parent patent claims are cancelled in a post grant proceeding the question arises as to whether claims in the continuation applications “could have been filed in response to any properly raised ground of unpatentability” in the post grant proceeding.

Consider the situation where the parent patent has a broad, generic claim that is cancelled. If the continuation (or reissue) applications present claims narrower in scope than the broad claim which was cancelled and if one assumes that the specification is identical in relevant respect, arguably, the narrow claim could have been presented as a substitute claim in the post grant proceeding. If the Office operates under the premise the continuation application claim should be barred under Rule 42.73(d), the Patentee would be effectively forced to introduce the arrowed, continuation claims in the IPR or PGR proceeding or lose them altogether. Yet, the proposed rules do not provide a mechanism for introducing distinctions en masse outside of a “reasonable number of substitute claims.” In fact, there is a “presumption” that a reasonable number of claims are those presented in one-to-one correspondence with respect to cancelled claims.

On the other hand, where continuation claims (or those in a broadening patent reissue) are broader in one or more respect than the parent patent the Patentee may have a meritorious argument that the claim could not have been properly presented in the post grant proceeding in view of the statutory prohibition against broadening claims in such a proceeding. This may enable Patentees to circumvent the Rule 42.73 estoppel by simply ensuring that their claims are broader than the cancelled claim in at least one respect.

The Office would be opening up quite a can of worms by establishing a system in which all claims of a portfolio would need to be analyzed with respect to claim scope after a post grant claim cancellation.

Continuation Practice in Broadening Patent Reissue Applications Examined

Yesterday, the CAFC decided an important question pertaining to broadening patent patent reissue practice. (In re Staats, decision here). The issue before the Court was whether a broadening patent reissue application of Apple Computer Patent 5,940,600 was filed within the proscribed two year window.

During prosecution of the subject patent reissue application (a third, broadening continuation filing) the examiner rejected the claims under 35 U.S.C. 251 as presenting broadening claims outside of the proscribed two year window. The Office reasoned that the error in the original reissue filing (parent) was allegedly unrelated to the error presented for correction in the third filing…presented for the first time 7 years later. In essence, the Office argued that it is not enough to merely present a “place holder” intent to broaden within the proscribed two years only to file a continuation years later that attempts to broaden in “unforeseeable” ways.

The CAFC heard arguments on the BPAI decision back in September of 2011 and strongly hinted that earlier CCPA precedent would control the case. Not surprisingly, the Court reversed the USPTO based on previous precedent In re Doll 419 F.2d 925,928 (CCPA 1970) and explained that Doll could not be overruled absent the en banc consideration of the Court, noting:

[W]e see no basis for limiting Doll to situations where later broadened claims are related to, or are directed to the same embodi-ment as in the original application. The PTO’s approach is, moreover, unmanageable. Every claim must, by definition, be different in scope than the other claims of the patent, and it is difficult to distinguish one patent embodiment from another or to determine when a later claim is related to an earlier claim. A rule requiring that the new claims be related to the previously submitted claims, or be directed to the same embodiment, would be difficult to administer in a consistent and predictable way. . . . . In short, this panel is bound by Doll. See S. Corp. v. United States, 690 F.2d 1368, 1370 (Fed. Cir. 1982) (en banc) (adopting the decisions of the CCPA as binding precedent); In re Am. Fertility Soc’y, 188 F.3d 1341, 1347 (Fed. Cir. 1999) (holding that an earlier precedential decision is binding precedent on later panels). If the PTO believes we should overrule Doll, that is a matter that must be presented to the en banc court.

Yet, the concurring opinion strongly suggests that that the PTO’s public policy arguments for potentially overruling Doll would fall flat.

In the end, the PTO . . .  falls back on policy concerns it claims allow it to ignore the face of § 251 and to disregard both its own and this court’s pronouncements regarding the proper operation of that governing provision. Given the limited life of additional claims which can be sought through the type of continuing reissue practice at issue here, the protections afforded by the intervening rights provisions in 35 U.S.C. § 252, and the countervailing implementation concerns the PTO’s new standard creates, however, the PTO’s policy arguments are over-stated – substantially so. Even if those policy statements were not overstated, they would be an insufficient reed upon which to rest such a sweeping change in the law.

Indeed, most practitioners avoid broadening patent reissue practice altogether by simply maintaining a pending, regular continuation application. The notion that anyone would pursue broadening patent reissue as a matter of course ignores the significant pendency problems, as well as thorny recapture and intervening rights issues. As such, it would seem unlikely that the Office will pursue en banc review.

Romney, Gingrich and Santorum Named as Defendants in Patent Suit

This past Monday, EveryMD filed suit against the Republican presidential candidates for…well..using Facebook. The suit, captioned EveryMD v. Rick Santorum, Mitt Romney, and Newt Gingrich(C.D.CA) explains that U.S. Patent 7,644,122 is infringed by Facebook, and as business customers of Facebook receiving messages, that there is some type of liability on the part of the candidates. (complaint here)

The only independent claim of the ‘122 Patent recites:

A method for providing individual online presences for a each of a plurality of members of a group of members by an interface server computer comprising the steps of:

maintaining a database comprising information associated with each of said plurality of members at a database system connected to said interface server computer;

allotting individual URLS to each of said plurality of members by associating an individual URL with each individual member of said plurality of members in said database system;

associating an individual home page for each said individual member of said plurality of members with said individual URL allotted to said individual member in said database system, said individual home page comprising information from said database associated with said individual member; a first control for submitting a comment about said individual member; and a second control separate from said first control for sending a message other than said comment to said individual member;

receiving by said interface server an online request for said individual URL from a requesting source;

providing said individual home page by said interface server computer to said requesting source.

It seems likely that Facebook (in theory anyway) is the only direct infringer of the claim, curiously, no indirect infringement theory is pled relative to the defendants named in the complaint. Thus, the complaint is almost certainly to be dismissed.

It is also worth noting that Facebook sought reexamination of the ‘122 Patent, in 2010. Currently, all claims currently stand rejected at the USPTO. Oral argument at the Board of Patent Appeals & Interferences (BPAI) will likely occur in the next few months. (95/001,411). Thus, even if the case were to somehow go forward, it would almost certainly be stayed due to the late stage of the reexamination. So, aside from costing the candidates some nominal legal fees, this filing seems to be more of a public relations exercise.

Perhaps a more interesting (although academic) question is whether the ‘122 Patent, entitled “Method, Apparatus and Business System. . .” claims enough of a “technological invention” to avoid Post Grant Review eligibility under the new Transitional Program for Covered Business Method Patents.

Reexamination Certificate Printing Process Streamlined

A patent reexamination proceeding is terminated by the USPTO upon issuance of a Notice of Intent to issue a Reexamination Certificate (NIRC). Thereafter, the proceeding formally concludes with the issuance of the actual reexamination certificate. The certificate functions to communicate the results of the proceeding to the public (claim changes/cancellations, etc.)

Historically, upon issuance of the NIRC the USPTO would hand the file off to a government printing contractor located in Pennsylvania for printing of the reexamination certificate. Once in the hands of the printing contractor, the file would be reviewed to ensure completeness (and was often times shuffled back to the agency for administrative oversights, largely related to IDS filings). Thus, from the time a NIRC is issued, it is not uncommon for a certificate print cycle to span 4-6 months in duration. This delay was more than just a minor inconvenience for Patentees as amended/new claims do not legally exist until printed. In other words, potential infringement damages for such amended/new claims are lost to bureaucratic inefficiency even though the substantive aspect of the reexamination proceeding is effectively finished.

The good news is that the USPTO has now addressed the printing delay and has drastically reduced the duration of the print cycle in recent weeks. During the December 2010 to January 2011 time frame, the USPTO issued 78 reexamination certificates. For these certificates the average printing cycle spanned 120 days. Since that time, the USPTO made changes to the volume of data that is to be printed on a certificate. As a result of the changes implemented this past November the printing cycle has been reduced to 47 days. That is to say, from November 2011 to December 2011 the USPTO issued 70 certificates in an average time of 47 days, including one which issued in only 33 days.

The improvement is charted below (Click to Enlarge):

certificate info

The USPTO Office of Data Management (ODM) has provided me with the following data:

RX-NIRC Dates of December 2010 through January 7, 2011 (duration 6 weeks):
Total volume – 78
Issued on average in 120.6 days
Issue dates ranged from February 22nd to May 24th
40% of these reexams were well over 120 days

RX-NIRC Dates of September 2011 and October 2011 (duration 6 weeks):
Total volume – 102
Issued on average in 52.9 days
Issue dates ranged from November 1st to December 6th
Less than 8% of these reexams were over 100 days.

RX-NIRC Dates of November 2011 and December 2011 (duration 6 weeks):
Total volume – 70
Issued on average in 47.9 days
Issue dates ranged from December 13th to January 31st
0 reexams were over 100 days
1 reexam issued in 33 days

The time reduction was achieved by reducing the amount of data printed on the reexamination certificate. No longer will the certificate list the significant volumes of prior art submitted to the Office during patent reexamination proceedings, instead, this information will now reside in PAIR as a new “tab” of the interface.

The re-engineering of the print cycle is a much welcomed change.

Going forward, it is expected that the USPTO will continue efforts to streamline patent reexamination proceedings. For example, during the recent PLI 2012 Post Grant Patent Practice Program the director of the Central Reexamination Unit (CRU) commented that the previous streamline initiatives were placed on the back burner due to the monumental effort of the Agency to implement the various provisions of the America Invents Act. However, now that the bulk of the AIA rule making effort is complete, the Office expects to get back to their previously proposed streamline initiatives.

Stay tuned!

MPF Claim Interpretation Required to Initiate New AIA Proceedings

In past posts I have pointed out that in analyzing requests for patent reexamination, Examiner’s are trained to apply a Broadest Reasonable Interpretation (BRI) to patented claims. Unfortunately, over emphasis upon this standard ignores the fact that the scope of certain patent claims are defined by 35 U.S.C. § 112, 6th paragraph, and may not be interpreted in this manner, namely—“means/step-plus-function” claims.

In my experience, the USPTO will almost always grant a reexamination request for MPF claims by applying an improper BRI analysis of the recited function alone. In fact, I have never seen a Request denied for failure to provide the necessary structural mapping between the specification and MPF claims. Of course, such a mapping is expressly required when appealing a rejection to the Board of Patent Appeals & Interferences (BPAI).

As a result, Patentees will often argue for proper claim interpretation under 112 6th paragraph throughout the reexamination, only convincing the Board as to the proper interpretation of the MPF claims years later. Likewise, by not forcing the issue at the time of the Request, Patentees may only resort to arguing 112 6th at the appeal stage (after failing to distinguish art under the BRI standard); either situation is a waste of Office resources. One such case of a Patentee changing course was illustrated yesterday in Ex Parte EON Corp. IP Holdings LLC. In reversing the examiner’s rejection, the Board held:

To the extent that the Examiner responds to arguments in the Appeal Brief, the Examiner finds Appellant’s interpretation of the “facilities for” limitation to be unduly narrow, and that interpreting those limitations to involve set-up and response associated with a broadcast and acknowledge mechanism “is not required to reasonably interpret the claims” (Ans. 8). However, as we find those limitations to be means-plus-function limitations, that is exactly what we must do, as discussed below.

Perhaps recognizing this trouble spot, the USPTO has proposed that such mappings be included in petitions for the new PGR and IPR proceedings of the America Invents Act.

To this end, IPR Rule 42.104 (3) requires:

Where the claim to be construed contains a means-plus function or step-plus-function limitation as permitted under 35 U.S.C. 112, sixth paragraph, the construction of the claim must identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function;

PGR provides the same requirement in Rule 42.204(3).

Going forward, due to their narrower scope, MPF claims  may become an increasingly valued hedge against post grant USPTO patent challenges.

Modern Patent Troll Business Model Insulated from New Post Grant Challenges

Roughly two weeks ago the USPTO published the last of the Post Grant related rule packages established by the America Invents Act (AIA). The rule packages propose hefty filing fees for both Post Grant Review (PGR) and Inter Partes Review (IPR), $35,800 and $27,200 respectively. These filing fees attempt to capture the aggregate cost of conducting these proceedings as estimated by the Agency. Although the filing fee price levels were largely expected by the public, especially after the proposed increase in the filing fee for ex parte patent reexamination, the accompanying claim-count surcharge was not.

In accordance with the claim count surcharge, the filing fee for an IPR or PGR that includes more than 20 challenged claims will escalate in price for every 10 claims over the established 20 claim base line. The IPR & PGR fee schedule is reproduced to the left.

fees

If implemented as proposed, the claim count surcharge will undermine the intent of Congress by providing a very clear road map for patent trolls to avoid these proceedings, at least with respect to their licensing assertions against small-to-medium sized companies.

For example, a patent with 20 claims could theoretically be made subject to an IPR that advances 20 different rejections against all 20 claims for a $27,200 filing fee (Request page limitations aside). On the other hand, if a patent having 51 claims is subject to a request advancing a single rejection against all 55 claims, the USPTO filing fee alone is $68,000. Aside from the fact that the Office is likely performing much more work in the lower cost, 20 claim example above, the proposed fee structure will be cost prohibitive for many targets of troll campaigns— not because of the cost in a general sense, but because of the economics of the patent troll game.

Currently, trolls will pursue  20-30 small companies in an infringement filing with the District Court. The troll will offer relatively low license fees to dismiss party from the law suit, perhaps $100-300K. (since the AIA prohibition against lumping defendants together they are now named in 20-30 individual suits as opposed to one).

As IPR and PGR must be pursued within a year of a the filing of a complaint for infringement, it would be uncommon for individual claims of a large subset to be identified at that time of the IPR/PGR filing. Thus, IPR and PGR Requesters are effectively forced to address all claims of a given patent and incur maximum filing fees.

If every IPR request for a patent with more than 20 claims would cost at least 150-200K to file (fees, plus atty costs), and a nuisance license fee is offered by a troll at 150-200K, the math just doesn’t add up for small to medium size companies to risk pursuing these new proceedings. Understanding this new reality, trolls will invariably add countless claims to pending applications to effectively insulate themselves from post grant challenges from all but the biggest of targets.

Certainly, ex parte reexamination would still remain an option to challenge such patents, but, with longer pendency as compared to the new proceedings, and historical results that favor Patentees, this “choice” is largely illusory.

To avoid these unintended consequences, the Office should consider a surcharge that is not based on claims (a factor out of control of the Requester), but instead on the number of proposed rejections. In this way, every patent could be challenged for the base line filing fee irregardless of the claim count.

Rejection Based Fee Structure

While the 20 separate rejection example above may seem extreme, it is not.

In fact, the vast majority of criticisms from the Office on current IPX practice is the number of rejections that are advanced by Requesters (driven by IPX estoppel concerns). To combat this practice, the Office proposed a “representative rejection” idea last Spring to cut down on the number of rejections the Office would need to consider during a given proceeding. The USPTO is now in a position to effectively force a representative rejection practice by linking the fee structure to the number of proposed rejections, not claims. In the vast majority of proceedings it is the number of rejections that tasks the Office’s resources, not the number of claims. Indeed, in the predictable arts where trolls are far more prevalent, high claim counts are largely just repetitive claims with minor variation in scope.

Using a real life example, several patents of the infamous NTP portfolio include several hundred claims. Take NTP patent 6,317,592, this patent issued with 664 claims in 2001. To challenge the ‘592 Patent in IPR next September would cost 1.6 million dollars in USPTO fees. That kind of price tag is not going to encourage litigants to use the new USPTO proceedings.

Under a rejection based fee structure a Requester can proceed with their best art/arguments on all claims, or, if overly cautious — pay more to advance additional arguments. This will enable challengers to use these proceedings as true alternative to litigation.

USPTO to Host First of Sevral Road Shows at Alexandria Campus

Today the USPTO will conduct a webinar explaining the rule packages recently issued to implement the vairous provisions of the America Invents Act. Information necessary to access the webinar is found (here), along with the agenda. Topics include, Supplemental Examination, Post Grant Review, and Inter Partes Review. A public Q&A session with the will be conducted.

In other PTO news, the Patent Public Advisory Committe convened at the USPTO this past Wednesday to comment on the proposed fee increases. Several of the major bar associations questioned the need to raise fees to the extent proposed. (webcast recording here) 

Court Cites ACP as Supportive of Summary Judgment of Invalidity

Generally, when reexamination evidence is used to support contentions of patent claim invalidity, the accused infringers do not simply attempt to equate the grant of a request for reexamination with patent claim invalidity. Instead, the accused infringers often attempt to use the grant of reexamination to substantiate their invalidity contentions. The argument is that an alleged infringer’s invalidity contentions are entitled to more weight where the Patent Office has found at least some substantial new question of patentability based on those same arguments, or can demonstrate repeated rejections of the claims by the USPTO.

This tactic, while often deemed too prejudicial for consideration by a jury is often times an acceptable practice for summary judgment purposes. The advantages of this practice were demonstrated last week in General Electric v. Mitsubishi Heavy Industries (NDTX).

In leveraging the advancing stage of the parallel inter partes patent reexamination of the GE patent, the Court explained:

The Court’s conclusion on this point [finding the patent invalid based upon the same art] is bolstered by the “Action Closing Prosecution” (“the Action”) that was recently issued by the United States Patent and Trademark Office. The Action, which concludes the reexamination of the ‘055 patent that Mitsubishi requested in April of 2011, declares claims 1 and 12 of the ‘055 patent invalid as anticipated by GE’s of U.S. Patent No. 6,879,055 Ex. 1, at 8-9. The Action expressly rejects the very same reasoning GE asks the Court to adopt:

Patent owner argues at pages 6-7 of the Response that MOD-SA does not disclose a “base frame” made of discrete upper and lower parts, because claim 1 requires both the upper part of the base frame to carry a drive train, and the lower part of the base frame to have an azimuthal drive device. As reasoned by the patent owner, MOD-SA does not satisfy these limitations. The examiner disagrees because the structure encompassed by the plain language of claim 1 is fully met by the structure exhibited by MOD-SA. There is no apparent ambiguity surrounding the terminology used in claim 1 relative to the [‘055 patent] disclosure. In the [‘055 patent], the upper part (6) carries the drive train (12), and the lower part (16) has the azimuthal drive device (23). In comparison, the MOD-SA apparatus exhibits an upper part (bedplate) carrying a drive train (gearbox), and a lower part (yaw subsystem) having an azimuthal drive device (yaw drive mechanism. Patent owner’s argument thus relies upon semantic differences in wording, which is considered unpersuasive in distinguishing MOD-SA.

Id. at 16.          .                     .                  .

GE reminds the Court that the Patent Office’s Action is not final and argues that, as such, it is not relevant to the issues pending before the Court.

The Court has considered the Notice and Response. The Court reached the decision that Mitsubishi is entitled to summary judgment of invalidity on its own accord, without reference to the Patent Office’s Action. The Action, therefore, is relevant only to the extent that it validates the Court’s decision.

With inferences weighed in favor of the party opposing summary judgment of invalidity, the added benefit of an ongoing reexamination can be just enough to tip the scales. (decision here)

In re Tanaka Decision Likely to Drive Two-Part Supplemental Examination Filing Strategy

During yesterday’s Strafford Legal webinar on the topic, I explained that Supplemental Examination (SE) is a mechanism of the AIA that is designed to effectively cure inequitable conduct via a new post grant proceeding of the USPTO. This mechanism, effective September 16, 2012 will be available to all issued patents.

In operation, SE allows a Patentee to submit very detailed explanations of potential issues that may serve to render the patent invalid under an inequitable conduct theory in litigation. Upon submission of Substantial New Questions of patentability (SNQs) detailing such potential defects, the Office will reconsider or correct such information; that is to say the Office will perform a “supplemental examination.”

If the SNQs of an SE request do not rise to the appropriate level to justify further proceedings, an SE certificate is issued stating such, and the proceeding concludes. Likewise, should SNQs be identified in the request for SE, a certificate is issued identifying such. Thereafter, a modified form of “re-examination” is initiated by the Office to explore the SNQs presented in the request. Should the Office determine that the identified SNQs do not preclude patentability in the reexamination phase, a reexamination certificate is issued to complement the SE certificate. Thus, SE is modeled on the same “but for” materiality standard pronounced in Therasense.

At first blush, the option to cure potential inequitable conduct issues seems an attractive option for Patentees. Yet, practically speaking, there may be very few instances in which an SE filing is advisable.

First, the level of detail required to present an SNQ in an SE request is significant, unlike other post grant options— such as patent reissue. The CAFC’s decision in Tanaka may present a more appealing option for those seeking to correct all but the most pronounced inequitable conduct problems.

Consistent with Tanaka, a patent reissue application can be pursued based upon the simple addition of new dependent claims. Thereafter, IDS filings can be submitted for many of the same SNQs that would otherwise be presented in a request for SE. Perhaps most importantly, there would be no need to explain these issues with the same detail as required by the SE rules. After considering such IDS filings, should the Office allow the claims without amendment “but for” materiality is disproven. In other words, inequitable conduct on such issues is for all practical purposes cured by operation of the patent reissue. On the other hand, if it becomes apparent that amendment is required (thus proving “but for” materiality), the Patentee can simply abandon the reissue filing and pursue the more detailed, and much more expensive, SE filing.

Second, as mentioned above, the cost of the SE filing is significant.

As outlined in January’s rule package for supplemental examination, a filing fee of $ 5,180 is necessary to request supplemental examination, and another $16,000 for the resulting ex parte reexamination (should the supplemental examination request raise a substantial new question of patentability (SNQ). Conversely, the filing fees for patent reissue are currently set at a fraction of the cost of an SE filing.

Moreover, the SNQ standard applied in SE is a very low hurdle (over 94% of SNQs are accepted by the Office in ex parte patent reexamination filings.) On the other hand, the prima facie standard necessary for a first action is considerably higher. As such, it is not that uncommon in current ex parte patent reexaminations proceedings for the Office to grant an SNQ, then promptly issue a first action confirmation of the claims. Under the SE cost structure, a Patentee would be paying $16,000 for a determination that may be seemingly made for several hundred dollars via a patent reissue IDS filing.

Third, calling out practitioner conduct is fraught with peril.

It seems extremely unwise for a law firm to pursue SE for issues arising from it’s earlier prosecution representation as they must detail such issues in an SNQ format. Depending upon the circumstances, the request itself could serve as a road map for a malpractice charge. Likewise, filing a request and calling out the conduct of a competitor, in a public filing, may be equally unwise.

The USPTO has predicted roughly 100 SE fillings per year based upon current Patentee initiated ex parte patent reexamination filings (the thinking being SE offers the same advantages with additional benefits). Yet, SE filings are expected to be few and far between. For those that are pursued, testing the waters first via patent reissue would seem to be a prudent strategy.

CAFC Re-considers Disclaimer Based Intervening Rights Defense

During a post grant proceeding, an amendment of an originally issued claim could create an intervening rights defense for potential  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). Whether or not a claim change in post grant patent proceeding results in the an intervening rights defense is far from a straightforward determination as evidenced by the recent decision Marine Polymer Technologies, Inc. v. Hemcon, Inc..

The earlier panel ruled that disclaimer of claim scope is equally effective in creating an intervening rights defense as an explicit amendment. As such, the decision may be distorted to suggest that even if the patent owner is merely urging a claim interpretation that is consistent with the manner in which the term would have been understood at the time the underlying patent application was filed, intervening rights are created  For example, in cases where the post grant record simply clarifies the way in which a skilled artisan would have understood a claim term at the time of filing, or reiterates the positions of the previous intrinsic record, the scope of the claims cannot properly be said to have been altered during the subsequent proceeding.

Will the en banc ruling provide for such needed flexibility?

Post grant PTO patent proceedings often focus on the meaning of different aspects of originally issued claim language than were considered during the earlier application prosecution.  Therefore, much of the argument made by the patent owner during the subsequent PTO proceeding is directed to new issues not previously considered by the PTO.  It is to be expected that re-opening the intrinsic record via post grant file histories will often include substantively new discussion of various claim terms.

Moreover, in post grant proceedings patent claims are accorded the broadest reasonable interpretation (“BRI”).  Determining the BRI requires a different analysis than carried out in a district court during claim construction, and notably, there is no requirement that the PTO consider the earlier prosecution record in ascertaining the BRI and meaning of an originally issued patent claim.  This often places patent owners in the position of having to re-argue distinctions which were implicitly or explicitly accepted by the previous patent examiner.  When the PTO requires amendment of a claim in a post grant proceedings the amendment may in fact be a simple restatement of previously agreed upon claim scope, which should not give rise to intervening rights.

Flexibility would appear to be a crucial component of an intervening rights analysis, taking into account the realities of post grant practice. For more discussion on the Marine Polymer case, as well as recent amicus filings, see today’s Patently-O discussion.