Post Grant: Narrowing Claim Construction Argument Creates Intervening Rights for Accused Infringers

by Dennis Crouch

Marine Polymer Tech. v. Hemcon, Inc. (Fed. Cir. 2011)

It seems that most accused infringers with a credible argument on prior art also file for reexamination or else the patentee preempts with a reissue application.  These cases create parallel processes ongoing in both the district court and USPTO with both bodies making interim determinations about claim scope and, ultimately, patent validity.  The balance of power and respect between the USPTO and the courts continues to be in flux, and that flux will most certainly continue as the USPTO implements the changes to the post grant system mandated by the Leahy-Smith reforms. 

In this case, the Federal Circuit has held that a narrowing claim construction argument made by the patentee in a reexamination gives rise to absolute intervening rights for accused infringer’s products made or sold prior to the reexamination request.  The key importance is that this decision is that the reexamination is was still ongoing at the time of this Federal Circuit decision.

Although we have not directly addressed whether arguments made to the PTO during reexamination can amend the scope of claims for purposes of the intervening rights doctrine, we have consistently held that arguments made to the PTO on reexamination can create an estoppel or disavowal and thereby change the scope of claims even when the language of the claims did not change. . . .

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.

An additional twist here is that the “narrow” claim construction argued by the patentee was simply the construction decided by the by the district court.  On appeal, however, the Federal Circuit held that the construction was erroneously narrow and that, therefore, the patentee’s argument was also a narrowing  argument.

The majority opinion was written by Judge Dyk who was joined by Judge Gajarsa.  Judge Lourie filed a dissent — arguing, inter alia, that by statute, intervening rights only apply to “amended or new claims.” See 35 U.S.C. 307(b) and 316(b).

39 thoughts on “Post Grant: Narrowing Claim Construction Argument Creates Intervening Rights for Accused Infringers

  1. until we enact immediate novelty check on fileing the same paid off corruption in the office will continue. There is no sence in fileing because the true inventor wont be recognized and patenting around and backdating will prevail

  2. “Heavy on boilerplate, skimpy on any substance.”

    Lulz. That describes about 99.99% of the office actions I receive.

    Considering that 75% of the pre-appeal brief requests and/or appeal briefs that are filed result in the examiner withdrawing the rejections and re-opening prosecution, I hardly think patent attorneys and agents are not persuasive. I think examiners make sh!tty rejections and are rewarded for making sh!tty rejections. So they make lots of them. When they’re finally called out, they admit they do sh!tty work and re-open prosecution and issue more sh!tty office actions. At least they aren’t rewarded for that.

    Appeal everything.

  3. You’re just now catching on to his idi0cy?

    Give MM a break, it is difficult to catch on when they are both saying the same things.

  4. 6, I’m afraid most examiners more like Malcolm than like you. They require us to amend the claims, which we are quite reluctant to do for obvious reasons.

    This case shows what can happen even when you argue for a narrow construction, and get it, without amendment.

  5. I would not doubt it in the least. I also suspect that many of the replies are similarly drafted. Heavy on boilerplate, skimpy on any substance. And then when you call about some mistake the attorney made in the response or in re some issue the attorney doesn’t have a very good memory of the case he supposedly just drafted a response to a few days ago? You can tell which responses are suspect for these kinds of things.

  6. EG,

    Did you use your magic microscope for that zoom in? I heard the Governmnet has a few left over…

  7. Have a heart, MM! You had so many “zeros” in these percentagesI had to “zoom in” to make sure the first percentage was, in fact, a greater than the second percentage (it is). Peace, Live Long & Prosper!

  8. “Please do not allow applicants to re-define terms in ways that contradict both their specifications and their originally filed claims.”

    Just for the record, I never said that it contradicts both. You seem to be conflating contradicting poorly drafted claims with contradicting the entirety of the application or the spec by itself.

  9. More likely that an en banc Federal Circuit would overturn versus SCOTUS.

    It’s true that a 0.0000000000000000001% likelihood is greater than 0.00000000000000000005% likelihood.

  10. You might be interested in the argument made on another patent lawyer’s DL yesterday that the poor quality of PTO appeal briefs is largely due to so many of them now being written by patent agents with maybe Phd’s but no legal training.

  11. if you want the last word, it’s yours,

    Thanks. Just about every point you made in your last comment was irrelevant, wrong, or unintelligible.

    I particularly like this one:

    Claims should never limit the spec in such a manner if they ever should at all.

    Please do not allow applicants to re-define terms in ways that contradict both their specifications and their originally filed claims. In other words, do your job right.

  12. While the majority may wish that the doctrine of “disclaimer of claim scope” should apply so that intervening rights attach to unamended claims due to statements made during reexam, that’s Congress’ call, not the Federal Circuit’s.

    So you think the Supreme Court will overturn? ;)

  13. Of course they don’t work–they are all government employees, one way or another–either federal agency employees, or employees of state-funded agencies and universities.

    Either that, or they are unemployed.

  14. Sorry, Lourie in dissent is correct that 35 U.S.C. § 307(b) means what it says. The rule announced by the majority in this case (intervening rights may attach due to arguments made during reexam relating to unamended claims) is directly in conflict with the express language of 35 U.S.C. § 307(b). This section clearly says intervening rights apply to “any proposed amended or new claim,” not arguments or statements made during reexam about what the unamended claim scope is. The concept of “disclaimer of claim scope” that the majority opinion is based on is a judicial doctrine, not a statutory requirement. While the majority may wish that the doctrine of “disclaimer of claim scope” should apply so that intervening rights attach to unamended claims due to statements made during reexam, that’s Congress’ call, not the Federal Circuit’s.

  15. 6, if you look a random sample of appeals in ex parte reexaminations, you will find that the MAJOR issue on appeal is claim construction. We are always battling the unreasonable interpretation, not the prior art.

  16. Malcolm, I agree with you in your discussions here with 6.

    Also see Paul’s comment below about arguments of claim scope. They are not or should not be taken as admissions in the ordinary case. This case must be limited to the disavowal of preexisting original and proper claim scope expressed affirmatively by the cancellation of the dependent claims, or else we are all in very, very deep do do whenever we begin to argue with the examiner about BRI. If the examiner is way too broad, and we argue a proper scope, I will agree that we give up the unreasonable interpretation, but I do not agree that the claims have been “limited” in scope for Section 251 intervening rights purposes.

  17. ” Thus, why would an attorney even want to make admissions against interest about claim scope in a reexam except to argue that the PTO claim interpretation in the reexam was UNreasonable under the “broadest reasonable interpretation?”

    Because he is a pimp?

  18. “Otherwise, would someone please explain to me how mere attorney allegations of claim scope in a reexam should be relevant to the claim re-allowance in the reexam when the claim scope in a reexamination is required to be tested under the “broadest reasonable interpretation”? ”

    Perhaps they were persuasive? I’ve heard of this phenomena but it is rare given that attorneys on this board are the first to admit they draft responses specifically so as not to be as persuasive as they can.

  19. I hope that this case is limited to it strange facts of cancelling dependent claims in a reexamination to somehow change the scope of parent claims. Otherwise, would someone please explain to me how mere attorney allegations of claim scope in a reexam should be relevant to the claim re-allowance in the reexam when the claim scope in a reexamination is required to be tested under the “broadest reasonable interpretation”? [I.e., NOT the In re Philips or other litigation claim interpretation standards.] Thus, why would an attorney even want to make admissions against interest about claim scope in a reexam except to argue that the PTO claim interpretation in the reexam was UNreasonable under the “broadest reasonable interpretation?”

  20. Well MM, you’re presuming they didn’t draft it wrong. If they have WD support in the spec (but not original claims) to make the change then they can say they did and make the change. NP.

    If the old dudes say different then fine, but that’s what I see the law as being, and how it is applied in mah office as of this minute.

    “The “amendment” here is simply re-defining at term to mean something that one skilled in the art would not understand the term to mean based on all the claims and the specification at the time of filing. ”

    Well if that be the case then the issue is simply one of not having WD. No need to turn this into a claim construction kerf uffle.

    “That just means the originally filed claims are that much more crucial to understanding the meaning of the terms.”

    Mmmmm, gonna have to disagree with you on that one bro.

    For example, if he makes a broad disclosure in the spec, and a narrow one in the original claims, or the other way around, he can flip to whichever one he wants later on within the bounds of WD. You don’t magically interpret the spec ivo the claims.

    I take it that is what happened in this case. He made a broad recitation in the spec, and mistakenly or not made his claims a bit more narrowly recited. Now he wants to broaden them up. Reexam claim broadening issues aside, I see no issue with that if he has WD in the spec.

    To do otherwise is to tell the applicant that he scr ewed up his first claims and cannot now amend them to take advantage of the WD provided in the spec. Such a measure would be rido nkulous and simply encourage people to file more overbroad garba ge at the outset.

    In other words, you appear to be telling me that, through some mechanism of claim drafting, one of ordinary skill might interpret a broad disclosure in the spec to not actually mean what the spec in a vacuum would mean. Absurd sir. Absurd. Claims should never limit the spec in such a manner if they ever should at all. They might shed light on how one meant a word to be, but if the applicant comes back and says “no, that was certainly not what I meant by it” and he has sufficient WD in the spec to indicate that wasn’t what he meant, then that should be sufficient. To say otherwise is to elevate technicalities of claim drafting above their station in life.

    “The language in the claims always has primacy”

    I agree, which is why if they change the claims via amendment all should be well, within the bounds of WD (and that includes possession).

    In any case, if you want the last word, it’s yours, I simply don’t care enough about this minutia of claim construction. If it ever comes up and is all that relevant to me then I might deem it worth my time to look into further. Considering the odds are rather large against that happening, meh.

    Perhaps some other old dude would like to chime in and give their perspective.

  21. Just because some doctrine of claim construction requires, because of weird drafting of deps

    There is nothing “weird” abut the dependent claims in this case.

    it doesn’t mean that they could not correct such a drafting error in the claims if they discovered they drafted the claims wrong.

    There is no “drafting error” here. The error was describing an invention intentionally using a term that later was shown to capture the prior art. You can’t just make up a new definition for a term during prosecution because it’s “convenient” when it contradicts the way that you used the term when you filed the application. You need to find some other language and some reasonable support for it.

    Within the bounds of WD they should be able to “correctly” amend their claims to mean what they want them to mean.

    The “amendment” here is simply re-defining at term to mean something that one skilled in the art would not understand the term to mean based on all the claims and the specification at the time of filing. Again, devising a new definition for a term where that definition is unsupported by the specification or claims (and contradicts one or both of those texts) is new matter. It doesn’t matter if the term is not new.

    In the present case, I agree with you that the spec lacked a clear definition. That just means the originally filed claims are that much more crucial to understanding the meaning of the terms. The language in the claims always has primacy. You can’t magically define a term in a novel way that contradicts the originally filed claims. Yes, this means more work both for you and the “old guys.”

  22. Idk bro. I’ll differ to the old guys on this one. Seems to me like the applicant can pretty much amend however he wants without adding new matter. If he wants to pull some slick sht then so be it.

    I agree with your example, but that’s a very straightforward genus>species relationship, idk if the same can be said of all cases, and more specifically of this instant case. Indeed, the applicant cannot renege on his originally stated and blatant definition of vessel in his spec, I’m not too sure the applicant in the instant case did such a thing. Just because some doctrine of claim construction requires, because of weird drafting of deps, a certain interpretation, does not mean that there is an explicit definition in the spec, and it doesn’t mean that they could not correct such a drafting error in the claims if they discovered they drafted the claims wrong. Within the bounds of WD they should be able to “correctly” amend their claims to mean what they want them to mean.

    In short, I don’t think that their method of drafting deps in the orignal app should control their later ability to draft unless there is corresponding issues raised because of their spec and overall application as a whole. Simply looking at a drafting boo boo in the original claims while ignoring the breadth or lack thereof in the spec is not the lawl I do not believe.

  23. 6, I agree that in many circumstances, the idea of resolving a dispute about the meaning of claim scope can be resolved by getting the applicant on record stating what the claim scope is. But the definition provided must be reasonable and it has to accord with claim construction under Phillips.

    The problem in this case — and I don’t think the facts are unusual — is that the claim construction being sought by the applicant was inconsistent with the originally presented claims and with the specification.

    I grant you that the district court judge was mostly responsible in this case for the screw up and most of the time you won’t be dealing with a court’s construction of a term when you do the examination. But you still shouldn’t do what the Examiner did here as a matter of habit. Deleting dependent claims that clearly define at least the outer boundaries of a particular claim term do NOT necessarily narrow the claim term. If the problem is an independent claim that is too broad, and the breadth is clear from the dependent claims, the correct solution is always to narrow the independent claim (and, of course, cancel any dependent claims that are no longer appropriate).

    Consider original claims:

    1. A novel vessel.
    2. The vessel of claim 1, wherein the vessel is a rowboat.
    3. The vessel of claim 1, wherein the vessel is a canoe.
    4. The vessel of claim 1, wherein the vessel is an inflatable raft.

    Same disclosure in spec (as Examples), and also disclosure that “vessels of the invention include rowboats and boating devices that support humans”. Prior art shows canoes and inflatable rafts.

    It is completely inappropriate to allow the applicant to merely state “The term vessel is limited to rowboats” and cancel claims 3 and 4. In light of the specification, that statement is new matter.

    I recognize that you appreciate the new matter issue and so I’m confident that you very rarely engage in this practice when the facts are analogous to those I’ve described (or analogous to the facts in this case). Kudos to you.

  24. RE: “file for reexamination or else the patentee preempts with a reissue application.”
    37 CFR 1.565(d) in the ex parte reexamination rules indicates that if pending concurrently with a reissue the two proceedings will normally be merged or one suspended.
    [Since the PTO handles reissues even more slowly than it does reexaminations, it would seem illogical for the reissue to “preempt” the reexam in most cases unless the patent owner has already cancelled or amended subject claims in the reissue?]

  25. Although I should add, regardless of what I just said above, and without having delved deeply into the facts of this case, it appears they decided it correctly.

  26. “The Examiner correctly realized that the district court had completely foobarred the construction of the term “biocompatible”. But at this point, where an opportunity for real improvement to the claims presented itself, the wheels fell off the train. Rather than simply amend the claims to clarify the scope (e.g., by removing the term biocompatible and replacing it with the district court’s definition, and cancelling the dependent claims), the Examiner decided that the identical result (narrowing the independent claims) could be achieved simply by deleting those troublesome dependent claims (which necessarily broadened the independent claims)?!?! What the f??!?!??”

    Well MM, to be fair, I do something analogous to this in my cases. I give them a 112 2nd for being amenable to two or more interpretations (although this may not work in the instant case and/or be proper) and then note that if they delete the dependent claims that are causing the ind to be more broad (or narrow depending on the case) then that is fine and would indicate the applicant’s intention to have the term be construed in a certain way. And I put them on notice of the construction that will be adopted if they leave as is. An examiner doing essentially the same thing by way of objection or rejection under another grounds without using 112 seems fine with me if the applicant goes along with it.

    I see no problem with doing this. If the applicant wants the term to be broad then fine, let him draft in such a way as it is broad and let him take out whatever is causing it to not be broad (unless in so doing he introduces new matter). If he wants it narrow then let him draft in such a way as it is narrow (again neglecting the new matter issue). What is the problem with that?

    Although I agree that one must look to other factors in the claim construction, including the ones you mentioned, that does not seem to affect the sort of maneuver they’re pulling here or the propriety of such.

  27. Ned: I am not so sure that the discussion of “estoppel” by argument is that all relevant in this case because of the criticality of the cancellation of the dependent claims. That is what narrowed the claims, not the argument.

    Regardless, Ned: the rule providing for absolute intervening rights when claim scope is changed by argument makes sense for all the reasons given by the majority.

    This case is a poster child for the inability of Examiners and judges (this time a district court judge) to understand the simple rules provided by Phillips.

    Did everyone notice how badly the district court screwed up the definition of ‘biocompatible’? The district court somehow managed to ignore completely the dependent claims which plainly required the term to be broader than the district court’s construction. Gosh, where have we recently seen a court ignoring Phillips completely and similarly reaching the wrong answer?

    After the claim construction, during the re-exam, the Examiner tries to fix the error:

    “The examiner initially adopted a different claim construction than the district court, concluding that “biocompatible” meant “low variability, high purity, and little or no detectable reactivity.” J.A. 39503 (emphasis added). [The] examiner noted his disagreement with the district court’s claim construction. He explained that the court’s construction was inconsistent with the numerous dependent claims that required a specific elution test score of zero, one, or two.

    The Examiner correctly realized that the district court had completely foobarred the construction of the term “biocompatible”. But at this point, where an opportunity for real improvement to the claims presented itself, the wheels fell off the train. Rather than simply amend the claims to clarify the scope (e.g., by removing the term biocompatible and replacing it with the district court’s definition, and cancelling the dependent claims), the Examiner decided that the identical result (narrowing the independent claims) could be achieved simply by deleting those troublesome dependent claims (which necessarily broadened the independent claims)?!?! What the f??!?!??

    As the CAFC noted, a proper claim construction involves looking at the prosecution history, including the claims as originally filed.

    If nothing else, this decision highlights the importance of claims — including originally presented but canceled claims — for claim construction. Other than express definitions of terms in the specification, there are no better sources for construing the scope of claim terms than the claims themselves and it is to the claims that we must look first. If the definition given to a term conflicts with the text of a dependent claim, the definition of that term is almost always wrong.

  28. To some degree, I think this summary is misleading in this: the reason that the District Court claim construction was wrong was because original dependent claims implied a broader construction of the independent claims than was given by the District Court. During prosecution, the patent office relied upon these dependent claims for its view that the District Court claim construction was erroneous. When the patent owner canceled the relevant dependent claims, the examiner now agreed that the independent claims could be construed narrowly consistent with the District Court’s construction.

    I am not so sure that the discussion of “estoppel” by argument is that all relevant in this case because of the criticality of the cancellation of the dependent claims. That is what narrowed the claims, not the argument.

    However, the discussion of estoppel by argument is present in the case and is therefore very confusing. I would almost think that it is dicta, but if it is not, I disagree with the Federal Circuit here.

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