Provisional Rights II: Substantially Identical Claims

Pandora Jewelry, LLC v. Chamilia, LLC, 2008 U.S. Dist. LEXIS 61064 (D. Md., August 8, 2008)

The provisional rights statute 35 U.S.C. §154(d) creates the potential that a patentee may collect damages for would-be infringing activities that occurred even before the patent issued. To recover, the statute requires that the invention claimed in the published patent application be “substantially identical” to those found in the issued patent.

35 U.S.C. §154(d)(2): The [provisional rights] shall not be available under this subsection unless the invention as claimed in the patent is substantially identical to the invention as claimed in the published patent application.

The language found in Section 154(d) runs parallel to that found in 35 U.S.C. §252. Section 252 allows a reissue patent to have retrospective power when the reissued claims are “substantially identical” to those in the original patent.

In the present case, Pandora sued Chamilia for infringement of its patent covering necklace keeper attachments. Chamilia moved for summary judgment on several issues – Pandora’s claim of provisional rights under §154(d).

The primary issue before the court was whether the patented claims were “substantially identical” to those in the published application. Like most patent applicants, Pandora had amended its claims during prosecution.

As a starting point, the court and parties agreed that the ‘substantially identical’ requirement of §154(d) was the same as that found in §252. This made analysis easier because the CAFC has interpreted §252′s “substantially identical” requirement on several occasions. In particular, the appellate court circularly noted that a “substantially identical” claim is one that is “without substantive change.” Laitram Corp (Fed. Cir. 1998). In that case, the court went on to provide a narrow interpretation – finding that “it is difficult to conceive of many situations in which the scope of a rejected claim that became allowable when amended is not substantially changed by the amendment.”

“Under § 252, amended patent claims are “substantially identical” to the original claims “if they are without substantive change.” Laitram Corp. v. NEC Corp., 163 F.3d 1342, 1346 (Fed. Cir. 1998) (internal quotations omitted). “[I]n determining whether substantive changes have been made, [a court] must discern whether the scope of the claims are identical, not merely whether different words are used.” Id. (citing Slimfold Mfg. Co. v. Kinkead Indus., 810 F.2d 1113, 1115 (Fed. Cir. 1987)). Although not a per se rule, “it is difficult to conceive of many situations in which the scope of a rejected claim that became allowable when amended is not substantively changed by the amendment.” Id. at 1348. Where a substantive change has been made to a claim, the allegedly harmed party has no provisional rights to assert.”

In Laitram, the CAFC also made clear that even purely narrowing amendments will violate the “substantially identical” requirement.

Pandora’s published patent application claimed a reversibly attached band. During prosecution, however, the applicant amended that element to be a “fixedly attached band.” According to the district court in its Markman hearing, this was done “in order to overcome the PTO’s rejection based on the prior art.”

Based the amendment from a reversible band to a fixed band, the court concluded that Pandora had “substantively amended the scope of the claim.” And thus, the patentee has no claim for any provisional rights. “Here, Pandora substantively altered the scope of the claim when it amended the patent to require a permanently fixed band. Because the issued patent is not substantially identical to the published patent application, Pandora has no provisional rights to assert.”

8 thoughts on “Provisional Rights II: Substantially Identical Claims

  1. Posted by: Ken Hobday | Sep 10, 2008 at 12:04 PM
    Posted by: SF | Sep 10, 2008 at 12:24 PM

    SF, I agree with your interpretation, but I think Ken has a point. Ken, I recall that if you file a preliminary amendment soon enough after your original filed application, the preliminariliy amended claims will be published. I think it’s 14 months or something like that.

  2. Ken, don’t you first need to ask whether the term “the invention as claimed in the published patent application” refers to the claims in the publication itself or merely the currently pending claims of application that has been previously published? I would belive it means the claims in the publication itself.

  3. Consider the following situations:

    1. I file a preliminary amendment to the claims PRIOR to publication, but the published application reflects only the original claims (this seems to happen). In this situation, can I notice the potential infringer both of the published application and the claims as they stand as of the date of publication and claim provisional rights?

    2. My application publishes, but I file a preliminary amendment prior to the first office action. Can I notice a potential infringer of both the publication and the amended claims and claim provisional rights back to the date of amendment?

    We’re trying to imagine situations where you could get provisional rights back to claims that haven’t substantially changed. Preliminary amendments aren’t in response to a rejection so it seems like you should be able to claim provisional rights back to the later of the amendment date or publication date (where PA filed before publication).

  4. “If you provide actual notice of the amendments filed to the accused potential infringer, can you functionally reset the published application to include the amended claims?”

    I doubt it. However, there’s an easier way. Simply ask for the application to be republished after your amendments, and then notify the “infringer” again.

  5. Here in the UK the idea is that a published patent application gives third parties notice of what the patent, when/if granted, might prevent them from doing. Provisional rights only allow damages back-dated to the publication date if the infringing act infringes both the claims as granted and the claims as published (under UK practice granted claims are rarely likely to be broader than published claims, usually narrower).
    “substantially identical”/”without substantive change” makes this US equivalent pretty toothless I’d have thought.

  6. I wonder what the group or individual thoughts are about the ability to “reset” a publication for the purpose of having a substantially similar claim issue. Since actual notice is required and any published application is part of a public record, what is the effect of claim amendments during prosecution and can this effect be manipulated? If you provide actual notice of the amendments filed to the accused potential infringer, can you functionally reset the published application to include the amended claims? Or is the consensus that the phrase “published patent application” be rigidly interpreted? And, if you are stuck with only being able to use those claims as originally filed to determine “substantially similar” to the issued claims, isn’t this a bit archaic in the world of almost instant posting of documents filed during prosecution?

  7. Can one import “as claimed in [any claim] of the published patent application”? So if the novelty-conferring feature is moved from a sub-claim to the main claim, do provisional rights still apply?

  8. No big surprise here. Even before Laitram, the Federal Circuit in the Slimfold and Seattle Box cases has made clear that “substantially idential” means “without substantive change.” In other words, unless the change between the original and amended claim is minimal, the amended claim will not be “substantially identical.”

    One key difference between “intervening rights” under the reexam and reissue statutes and “provisional right” under 35 USC 154(d) is that “provisional rights” are specifically precluded under 35 USC 154(d). By contrast, “intervening rights” under the reexam and reissue statutes permit the court, in its discretion, to allow the accused infringer to continue practicing the claimed invention where “substantial preparation” has been made and “under such terms as the court deems equitable for the protection of investments made or business commenced.” For example, the court may provide that the accused infringer pay a royalty to the patentee for such “intervening rights”

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