En Banc Federal Circuit To Reconsider Scope of Intervening Rights Defense

By Dennis Crouch

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

The Court of Appeals for the Federal Circuit has announced that it will hold an en banc rehearing of the Marine Polymer Tech case. Straying from its recent practice, the Court has not suggested any particular questions that it will address nor did the Court offer to receive friend-of-the-court briefs filed without leave. Thus, under the Federal Circuit rules of practice, any amicus curiae may file a brief only with either (1) leave of court or (2) leave of all parties to the appeal. (Fed. Cir. R. 29).

The initial appellate decision focused on the potential for intervening rights created by patentee arguments made during reexamination. Here, the court held that that a narrowing claim construction argument made by the patentee in a reexamination gives rise to absolute intervening rights for an accused infringer’s products made or sold prior to the reexamination request. An important quirk of the case is that the narrow construction that the patentee suggested to the PTO was the same construction that had been ordered by a district court in this case. Thus, at the time, the argued-for construction was seen as the true construction rather than a narrowing construction. However, the argued-for construction became narrowing after-the-fact once the Federal Circuit rejected the lower court’s construction as unduly narrow.

The majority opinion was written by Judge Dyk and Joined by Senior Judge Gajarsa. Judge Lourie filed a dissent that looked to the patent statute for guidance on the legal scope of intervening rights. He argued that the statute does not create intervening rights based upon arguments but rather only apply to “amended or new claims.” See 35 U.S.C. §§ 307(b), 316(b), and 252.

The question suggested by the plaintiff-appellate Marine Polymer follows Judge Lourie’s dissent:

Whether arguments made regarding a patent claim during reexamination of a patent give rise to intervening rights under 35 U.S.C, §§ 307(b) and 252, where the patent claim in question is neither “amended” nor “new” in the reexamination.

Intellectual Ventures filed a brief supporting the en banc rehearing – noting its “concern[] with the panel’s redefining of the term ‘amended claim’ to include original claims that have not been textually altered.”

In response, HemCon argued that Marine Polymer’s formalistic argument does not make sense. In particular, HemCom noted that it would be odd “to adopt a rule under which intervening rights would apply when claims are substantively changed during reexamination by altering the actual language of the claims, [but] would not apply when claims are substantively changed through arguments made to the USPTO.”

There is some tension between this decision and that of Bettcher Industries v. Bunzl USA (Fed. Cir. 2011). In Bettcher Industries, the court held that the estoppel provisions of 35 U.S.C. § 315(c) only apply once all appeal rights have been exhausted. In addition, the case is directly in tension with Laitram Corp. v. NEC Corp., 163 F.3d 1342 (Fed. Cir 1998). In that decision (penned by Judge Lourie), the court followed a two step process to determine whether intervening rights applied. First, the court looked to determine whether the text of the patent claim had changed. Since the text had changed in that case, the court then looked to see whether the change was “substantial.”

My expectation is that this decision will be reversed by a strong majority on rehearing.

68 thoughts on “En Banc Federal Circuit To Reconsider Scope of Intervening Rights Defense

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

    Just a note, on further review of the case, the patent had but one example of biocompatibility in terms of tests and results. The claimed invention showed essentially zero reactivity on all four tests. While the specification in a different section said that the claimed invention had a remarkably low bio-reactivity, the only description of biocompatibility in terms of tests was that the inventive composition exhibited a score of zero on all of the tests.

    So I amend my remarks in the above note to suggest that the District Court had it right when it held that “biocompatible” meant essentially zero reactivity on the enumerated tests.

    I think it is important to note here for the record that the infringing defendant urged the court that the broader construction sought by the plaintiff, i.e., having test scores greater than zero, e.g. 0, 1 or 2, was too broad and not supported by the specification. It is clear that the District Court agreed with the defendant’s argument when it limited the test score range to zero in construing “biocompatibility.”

    So the very claim construction adopted by the District Court was in point of fact urged by the defendant. After losing the case, on appeal, the defendant urged that the construction adopted by the court at their behest was incorrect and too narrow, exactly the opposite position they took in Markman.

    I would suggest at a minimum that the Federal Circuit “frown” on this practice.

  2. Malcolm, you might add some additional information to your analysis and thinking. The patent owner apparently argued during reexamination that the claims were valid over either interpretation, the Court’s or the PTO’s. Apparently the prior art showed a significant amount of bioincompatibiity, beyond either construction of biocompatible.

    So, it is not automatically true that the claims as certified by the PTO are valid but for the narrowing construction.

  3. Dennis, since the Feds will not accept further briefs, I assume that the briefs arguing for reconsideration were persuasive. Could you post them in some fashion?

  4. Malcolm, just to be clear here, how were the claims narrowed from pre-reexamination to post-reexamination? They were not amended. The claim construction as given by the Federal Circuit here controls both before and after, i.e, it is the same. In other words, the claim construction is identical as it has to be with unamended claims.

    How were the claims narrowed?

  5. That would be great if you were right. I just don’t have the time to camp at the library of congress to do the research. I think the colonial patent law and patent law under the art of confederation would be a good source as well – that information is very hard to find. Of course Story on Equity is a great resource and lead finder. Sounds like a challenge to the new admin court of patent revocation is cooking under the 7th (you can bet they will not rule in favor of the 7th amendment and put themselves out of a job!). Good luck.

    Q: can the commissioner sit as a judge on that board as well as the bopai? or is it just a division of the same admin court. That also IMO made for a powerful hayburns argument, 7th amendment too.

  6. White Night : I think you’re forgetting something. This all assumes that an infringer makes “proper” decisions about whether a claim should be held invalid as anticipated/obvious. This forgets that infringers sometimes infringe valid claims.

    I’m not assuming anything. I’m talking about this case and cases similar to it.

  7. iwasthere, I somewhat agree that the patent owner was not entitled to argue a construction broader than the construction of the District Court where the district court judgment was final.  However, I think the problem we had here was that the District Court proceedings were still under way. I don't think the patent owner want to argue in the patent office that the District Court claim construction was wrong, because such an argument may have had adversely affected the District Court case.

    Regarding your point about Hayburns, I think your point is that Congress could constitutionally remove from the courts the whole issue of validity making validity a creature of the patent office.  You point out that Congress cannot remove patent cases entirely from the courts because of the seventh amendment right to a jury trial on damages. But doesn't your scheme also raise an issue as to whether a patent owner has a right to trial by jury on the factual issues in dispute regarding validity? I recall discussing the subject a while back here in patently O, where I observed that in England prior to 1792 issue of validity was tried in two parts in England, where the facts were determined by a jury in the law courts, and the validity was decided based upon the determined facts by the Chancellor.

  8. Are you S@itting me. That far back the RR card I signed when I got my money was a one two punch? Statute and more Nails in my Coffin? I had better get to go to that hanging!

  9. Do I get to go to the Hanging? Come on now no violating my Rights.
    I remember snap… A Black guy. I also have a better Invention for playing online Poker. I hope it (if a bad guy) gets top of the Poker charts. I remember the whole year my winnings sat. Now back at yah!

  10. No because the patent owner was bound to the scope of the markman order under blonder. Also picture the reexam requester/defendant subsequently arguing to the court that the patent owner made misleading statements to the pto by NOT telling pto about the markman order and arguing for a broader construction! and now wants to amend the answer to include IC.

    BTW Ned, I thought further about the 7th amendment issue and reexam Q of yours the other day. As you know, I think there is a hayburns issue in the current scheme. One way to fix it – like in hayburns was to make the court claim an admin claim (not sitting as a judge to adjudicate the claim – but sitting as a commissioner instead). I think the 7th amendment, however, would halt congress from making a patent a pure creature of commissioners since there is a right to try patent damages to a jury (an art III jury that is, presided over by a art III judge).

  11. … they relied on the scope of the claims as originally issued which included an understanding based on the prosecution and legal history of the claims. So, for example, if the broad claims that issued originally encompassed the prior art …

    I think you’re forgetting something. This all assumes that an infringer makes “proper” decisions about whether a claim should be held invalid as anticipated/obvious. This forgets that infringers sometimes infringe valid claims.

    Sure, an examiner could have the same initial opinion (i.e., same mistake) as the infringer, but in view of patentee’s/reissue applicant’s argument sees the error of the initial opinion and confirms/allows the claim (unamended) subsequently. The infringer shouldn’t get a free pass just because the examiner made a mistake. Maybe he can avoid treble damages with an opinion of counsel, but he’s an infringer and should pay.

  12. Malcolm, and Phillips was also unambiguous that claim limitations cannot be read into the claims from the specification. In that case, baffle was not limited to obliquely angled baffles because there was no such limitation in the claims.

    In the present case, biocompatible was set forth as a range in at least one test of between zero and two. There is no support in the specification for any sub range, or for zero. Any attempt by the patentee to limit the claim to zero by amendment would have been met with an objection that the applicant was adding new matter. An argument that the meaning of biocompatible meant a particular range should have simply been rejected.

    The claim has a range defined by the specification and is not subject to limitation regardless of whether the attempt is made by argument or by amendment.

    This this is true regardless of the fact that there were issued claims claiming specific ranges. Those claims too were without support in the specification for the reason that there was no description of any criticality of the specific ranges or sub ranges.

  13. sockie: I don’t see why a defendant should be able to argue intervening rights. The claims were sitting there for them to read and construe. If the “meaning” of the claims were narrowed during reexamination, then that benefits the alleged infringer.

    Only if the narrowed claims are not being infringed upon. If the narrowed claims are being infringed, then the narrowing benefits the patentee, at least with respect to that particular infringer. This is most obviously true when the broader claims were invalid because they covered a method or composition in the prior art.

    If the same unamended claim were infringed, no matter how the claims were construed (i.e., both before and after reexamination), why should the infringer get a pass?

    For the same reason that qualifying infringers of a claim narrowed by an amendment during re-exam get absolute intervening rights under Sec 252: when they made their decision to go ahead and make or use the infringing product, they relied on the scope of the claims as originally issued which included an understanding based on the prosecution and legal history of the claims. So, for example, if the broad claims that issued originally encompassed the prior art, then it doesn’t matter if your product falls within the scope of those broad claims. The claim is invalid and your intervening rights are assured. The fact that a district court judge and a patent Examiner could work together (with the help of the applicant) to make a complete mockery of patent examination and claim construction should not be an excuse to deny intervening rights to someone who understood the originally issued broad claims to mean exactly what they say, on their face, to anyone skilled in the art.

    I do recommend reading my summary of the facts of this case in the earlier thread. What happened here is quite frankly unbelievable. Rhymes with musterclucks. The drafters of the intervening rights statute simply did not envision that what happened in this case could ever happen.

  14. The problem with your take is the actual application.

    What is the original claim construction?
    What is the “narrowed” claim construction?

    Whose claim constructions are we going to rely upon? The Examiner’s? The Courts? Plaintiffs? Defendants? Who gets to say what is the original claim construction and what is the narrowed claim construction?

    All this is a cluster-fcuk waiting to happen. The statute was written like it was because it is easy to determine when a claim was amended (or not).

    Regardless, I don’t see why a defendant should be able to argue intervening rights. The claims were sitting there for them to read and construe. If the “meaning” of the claims were narrowed during reexamination, then that benefits the alleged infringer. If the same unamended claim were infringed, no matter how the claims were construed (i.e., both before and after reexamination), why should the infringer get a pass?

  15. Prosecution history estopppel affects equitable EXPANSION of the legal claim scope under the doctrine of equivalents.

    Amendments to the claim affects the legal scope of the claim.

    Phillips is crystal clear that prosecution history can and should be looked at when determining the literal scope of claims. So right now, Ned, it is you who is “blurring well understood concepts.”

    The statute, 252, requires that the legal scope be changed, i.e., by amendment, for absolute intervening rights

    Are the words “legal scope” in section 252? I don’t remember that. I do remember the term “amendment.” You are repeating the dissent’s argument, which I understand well and which has some merit. The majority here recognize that the statute has a big loophole and they attempted to plug it up judicially. It’s been before and it will happen again. Under the circumstances, I don’t see why that’s so terrible. Right result and everything. Zero danger of creating some new “monster” that will ruin the patent system. Roll with it.

  16. Ned, Phillips is crystal clear that the prosecution history can and should be relied on as a source for claim construction. The drafters of section 252 simply didn’t anticipate the combination of applicant chicanery, district court incompetence and PTO incompetence that led to this particular Federal Circuit decision.

  17. OK, MM, there is a difference between equity and law.

    Prosecution history estopppel affects equitable EXPANSION of the legal claim scope under the doctrine of equivalents.

    Amendments to the claim affects the legal scope of the claim.

    I reference Warner Jenkinson, and the cases relied upon by the court in Hemcon, particularly the Cole case for support.

    Because the claims have not been amended, their legal scope is unchanged. Their equitable scope, though, may have been changed.

    The statute, 252, requires that the legal scope be changed, i.e., by amendment, for absolute intervening rights.

    Even in this case, the court held that the defendant Hemcon could continue to argue that the claims were invalid because the construction was wrong and that biocompatibilty not be zero. They could not do that if the claims were amended to require the narrower scope.

    The majority opinion here clearly blurred well understood concepts in reaching its holding.

  18. Ned: I still wonder how claim scope can be “narrowed” by PTO argument at all

    I’m not sure what you mean by “PTO argument”, Ned. In the instant case, the broad independent claims were narrowed during re-exam as a result of arguments made by Applicants. There is no avoiding this fact. There is also no avoiding the fact that the arguments made by the Applicants should never have been found persuasive. But to the extent they were found persuasive and/or to the extent the USPTO simply failed to do its job here, Applicants should not be rewarded by allowing them to do an end-around the intervening rights statute.

    The proper role of PTO argument estoppel to foreclose equivalents argument/scope. But that should not affect literal scope at all.

    Again, it would be nice if you were more clear about what exactly you mean by “PTO argument estoppel.”

  19. Ganja man, prosecution history estoppel traditionally affected the scope of equivalents. I think this is why the drafters limited §252 the claim amendments, which affect literal claim scope.

  20. Agreed that is not what happened in this case.  

    But I still wonder how claim scope can be "narrowed" by PTO argument at all:  The claims have one construction —  that of the courts — for Section 251/2 purposes.  If the construction of the original district court was too narrow, it was too narrow.  With the broader construction, the claims as properly construed, because of what happened in the PTO, now admittedly read on the prior art.   But the scope of the claims have not been narrowed.  The claims rather are invalid given the proper construction.

    MM, if you were to say the claims are narrowed  by the PTO argument, they avoid the prior art.  The claims remain valid and enforceable against future infringement and future infringers.   That does not seem right.

    The proper role of PTO argument estoppel to foreclose equivalents argument/scope.  But that should not affect literal scope at all.

      

  21. See my earlier summary of the facts of the case here:

    link to patentlyo.com

    Imagine two boxes, a smaller one inside a larger. The larger represents BRI. The smaller represents the proper construction.

    Those aren’t the facts of this case, Ned.

    a court has construed the claims in a previous Markman order. As construed, the claims covered the smaller box.

    Is the PTO bound by the district court’s claim construction during re-exam, Ned?

    The answer to your question is “No, the scope of the claims has not been changed when the claims were improperly construed and the Examiner withdraws his previous construction.”

    But that’s not what happened in this case. Not even close.

  22. The original decision was right on the policy. Patentees can achieve the identical result of a narrowing claim amendment by a clear disclaimer of claim scope in their argument — the fact that one carries intervening rights consequences, and one does not, is irrational. But the decision is dead wrong on the statute and cannot be reconciled with its text. Policy or no, you just can’t interpret “new” or “amended” claim to cover a situation where the claim language itself did not change.

    I agree with the sentiment, with the caveat that strange statutory constructions have prevailed in the past.

  23. The article also says: “There is some tension between this decision and that of Bettcher Industries v. Bunzl USA (Fed. Cir. 2011). In Bettcher Industries, the court held that the estoppel provisions of 35 U.S.C. § 315(c) only apply once all appeal rights have been exhausted.”

    Huh? The “estoppel” in 315(c) applies to accused infringers and whether they can present prior art defenses in litigation. It has nothing to do with the “estoppel” created by a prosecution disclaimer during the patentee, whether during reexamination or otherwise.

    The original decision was right on the policy. Patentees can achieve the identical result of a narrowing claim amendment by a clear disclaimer of claim scope in their argument — the fact that one carries intervening rights consequences, and one does not, is irrational. But the decision is dead wrong on the statute and cannot be reconciled with its text. Policy or no, you just can’t interpret “new” or “amended” claim to cover a situation where the claim language itself did not change.

  24. the noise is usually the constant.

    No doubt; here 90% is attributable to noise on any given thread of length: 60% direct, and 30% rebuttal.

  25. And Nurse Rachett? Is Nurse Brenda from the Perryville Marina a friend of yours? she sure took off in a hurry. Was that before or after the guy that pretends to clean boats came out of my Boat. And that morning the letter from McNeelis was put in a safe place…. But as soon as I went to look the boat Washer was gone and so was my Letter? Coincidinky?

  26. “You would also greatly impact Dennis’ blog with the precipitous drop in quantity of blog posts (even though average quality of blog post would skyrocket).”

    Ahh …. the old “signal-to-noise ratio.” Unfortunately, as I have learned on other blogs (and repeated here), the noise is usually the constant.

  27. Does anyone have any idea what it is like to hear someone that you adored tell you that they “never” lie! and as time goes by you catch him lying, but you can’t put your finger on it because in fact that he never was telling the truth because he was and is INSANE!

  28. How can anyone that had a persons best interests.. steal their GED and then hide the evidence that she got one? See what I mean about your insanity. Imagine Mann in New Hampshire too…. using a PO BOX to break another Law. See what I mean, you are insane! Never telling me who I was because you were stealing my money and my property… see what I mean you are insane. and then the frosting… YOU are going to have me committed! You are INSANE! I am a married woman. And you deceived my husband too! See what I mean… You are INSANE!

  29. Family Court is just my first stop. What you have done is not only Criminal but insane! Imagine all these Years and I am married. and you still did this to me with no PROOF. TSK TSK TSK!

  30. White Knight, I think the problem you identified is caused by “broadest reasonable interpretation.” The real question is whether conforming the claim to proper construction either by argument or by a clarifying amendment is changing the scope of the claim.

    This raises the very question of what scope are we talking about?

    The scope in the patent office?

    The scope in court?

    The scope in the patent office to the scope and court?

    We are dealing with an issued patent here. We are not comparing a patent application and an issued patent. We have to compare the claims before re-issue or re-examination and the claims after.

  31. Impressive Ned,

    I have no retort for you.

    Malcolm, of course, will only offer some lame answer (if at all). Most likely, involving dried stalks of grain.

  32. if that is the best you can do, then perhaps you should bow out now.

    Careful Wl? if Malcolm took your advice on his level of ability to post, we would never again see him post. If you take away his crayons and paper, what would he do in his rubber room all day?

    You would also greatly impact Dennis’ blog with the precipitous drop in quantity of blog posts (even though average quality of blog post would skyrocket).

  33. Paul,

    You do know that asking Malcolm to actually read a decision (much less actual law) is too much, don’t you?

  34. Malcolm, How does BRI figure into your calculus? Imagine two boxes, a smaller one inside a larger. The larger represents BRI. The smaller represents the proper construction. Let us assume for the sake of this argument that a court has construed the claims in a previous Markman order. As construed, the claims covered the smaller box.

    The examiner using BRI construes claims to cover the large box. During argument, the patent owner argues that the proper construction is the smaller box. Eventually the examiner agrees, withdraws all prior art rejections based upon the broader construction, and confirms the claims as patentable.

    Have the scope of the claims been changed?

  35. One might as well expect an attack on a poor drawing of a person to hurt the person.

    LOL

    Malcolm likes to draw stick figures on his paper tables to pound and beat up.

    And he’s getting sloppy. He forgot to call White Night a sockie.

  36. Sock-in-chief writes:

    “Because this never happens under the current law.”

    Not all Federal Circuit cases involve claim construction issues. However, put this in place, and you all but guarantee that all will.

    Considering that the law regarding claim construction is so well developed (cough) and so evely applied (cough, cough), I’m sure the Federal Circuit will welcome (cough, cough, cough) the additional work.

    BTW — if that is the best you can do, then perhaps you should bow out now.

  37. And even though this is repeated… What clearly (BOGGS) the mind is….. How can Mail that is clearly labeled from another TO ME… which in no way relates to what “CAN YOU HEAR ME NOW” be opened and sent to “CAN YOU HEAR ME NOW”? It just bogs the mind!

  38. Why would Heather call me and say it was someone else when she is holding it? And the fact that I can prove she was I have. So being able to discern where the first one disappeared to… elementary. TSK TSK TSK

  39. “Are those the facts in this case?”

    I didn’t reread the case this morning. (I thought there was something about inconsistent arguments, but I’d have to check. My comments were not made to support inconsistent arguments.) I just commented that I oppose the panel’s holding. Further, I would like a per se rule that arguments do not necessarily _change_ the scope. After all, there still are claim construction rules to tell what the scope should be, and that’s what matters.

  40. We need to be able to say (when it’s true, of course) that we only argued what the claim scope always was.

    Sure.

    Are those the facts in this case? Did the patentee make the argument you describe?

  41. And if I am correct in my assumption… and think I am… believe me there is no competing here. There is only one… And if it is necessary… My Atty. will know what needs to be done.

  42. Why did you eat that post just sent? I have all the proof. Now I know why He said to me you always $%#^&*& angry. I think his head blew off. But no need to worry I have all the evidence I need, and surely you do too! Like I said before you won’t ever scr@w me again!

  43. And only when I finally did get a (second) copy… did I realize that the Buzzing Bee was stinging me still. And that is when I fired another round. But the good thing is I did not visit wither of the places listed above, and I won’t till I get my day in Court. And to that I am LOLOLOLOLOL roflmao LOLOLOLOL committed!

  44. Malcolm thanks but, sorry, I’m not yet quite clear on this.

    You write that, in re-exam, all the claims survived unamended but nevertheless their scope was “substantially altered”. That would be down to the PTO file wrapper, would it? If so, I find that odd too.

  45. I don’t know if this says the same as what What loophole? said or it provides a different perspective:

    How does one respond to a rejection by arguing what the claim scope always was? Many times (for regular applications) I’ve argued that the examiner erred by, for example, not finding element A in the reference, so the example allows the case. Why should this be considered “narrowing” just because I got the rejection in the first place (and we all know that it’s out our control what some examiners do)?

    The panel does not justify a per se rule that every argument changes scope. We need to be able to say (when it’s true, of course) that we only argued what the claim scope always was.

  46. Description of Straw Man

    The Straw Man fallacy is committed when a person simply ignores a person’s actual position and substitutes a distorted, exaggerated or misrepresented version of that position. This sort of “reasoning” has the following pattern:

    Person A has position X.
    Person B presents position Y (which is a distorted version of X).
    Person B attacks position Y.
    Therefore X is false/incorrect/flawed.

    This sort of “reasoning” is fallacious because attacking a distorted version of a position simply does not constitute an attack on the position itself. One might as well expect an attack on a poor drawing of a person to hurt the person.

    See: link to nizkor.org

    MM, please leave your strawman at the door.

  47. Dorothy called – looking for the strawman…

    You don’t need to look hard sockie: Jan 21, 4:01 pm.

    Get stuffed.

  48. sockie I don’t think the Federal Circuit is interested in hearing all the appeals that will generated as one party is going to argue “X argument narrowed the scope of the claim” while the other party is going to argue “X argument didn’t narrow the scope of the claim.” I doubt the Federal Circuit wants to go there.

    Because this never happens under the current law. LOL, sockie.

    MTBHTDT.

  49. MD: Can anybody save me from having to read HemCon in full, by giving me the gist of just why it would be “odd”

    To understand the “oddness”, Max, I guess you’d have to ask yourself: what exactly is the point of a statute which provides rights to defendants who are literal infringers of a re-examined claim that was substantially amended during re-examination? My understanding is that such rights are intended to account for the fact that the public should be able to rely on the scope of issued claims when they develop their own product.

    Consider a patent issuing to Dipshite Inc. with a single claim:

    1. An easily moveable object for sitting, wherein said object comprises a flat board and three legs.

    The spec include this exact language as a description of the invention. It also states that the flat board and legs may be made of duoprex (an ultralight material previously used in space shuttle wings). Three Examples are provided which describe the weights of stools made with duoprex. An originally filed dependent claim reciting “wherein said board is made from duoprex” was canceled by preliminary amendment before prosecution. There was no prosecution history. No divs or cons are filed.

    I’m a stool maker and I’ve got a shed full of duoprex. I know and my patent attorney knows that the claim is invalid. I start making stools with duoprex seats. Dipshite throws its patent into re-exam. It’s picked up by Examiner Moe Rawn. Examiner Rawn states that the patent is invalid in view of the prior art but could be granted if the claim is limited to boards made of duoprex. Dipshite says “Well, that’s what exactly what the term “board” means, of course!” Examiner Rawn is working hard to recover from his meth addiction and re-exams are stressful. He issues the case without requiring Dipshite to amend its claims. Dipshite sues and absolute intervening rights are denied to me, even though the scope of the claim was substantially alterered during re-rexam.

    You don’t find that result “odd”, MD?

    Except for the final result, this is pretty much exactly what happened in this case. And it’s going to keep happening if certain nimrods on the Federal Circuit, in the District Courts, and at the USPTO don’t pull their heads of their axxes and learn how to construe claims properly.

  50. There is no loophole.

    Claim constructions issues are involved in almost every patent suit/reexamination. If you are going to say that an argument pertaining to claim construction allows for intervening rights, you open the door for every defendant to put an application into reexamination and no matter what happens (even if the patent came out of reexamination with unamended claims) argue “plaintiff/argued XYZ claim construction in reexamination, and we think it is narrowing … thus, we should be entitled to intervening rights.”

    As such, all a defendant has to do is put an application into reexamination to present a colorable argument as to intervening rights.

    I don’t think the Federal Circuit is interested in hearing all the appeals that will generated as one party is going to argue “X argument narrowed the scope of the claim” while the other party is going to argue “X argument didn’t narrow the scope of the claim.” I doubt the Federal Circuit wants to go there.

    I also doubt Congress cares in the slightest. They’ve done their big “patent reform” (aka the little band-aid masquerading as an overhaul). They won’t be touching patents for awhile.

  51. The CAFC panel decision dissent, which I assume will be adopted en banc here, reminds me of a sarcastic comment of former CAFC Chief Judge [and founder] Howard Markey to the effect that “when all else fails, read the statute.”

  52. Quoting from Dennis above:

    “HemCom noted that it would be odd”

    Can anybody save me from having to read HemCon in full, by giving me the gist of just why it would be “odd” (because, for me, looking in from outside, it isn’t self-evidently “odd” at all).

  53. My expectation is that this decision will be reversed by a strong majority on rehearing.

    If so, then Congress needs to re-write the statute to remove the loophole identified by HemCom.

  54. Dennis,

    I concur that the en banc Federal Circuit will most likely reverse the panel decision, and if they don’t, be prepared for a vociferous dissent from at least Lourie and Newman. The majority are simply reading when intervening rights apply wrong. As Lourie correctly observed, only amended claims or new claims are subject to intervening rights.

  55. Does anyone have an idea of when a final decision will be published for this case? What is an approximate time frame for en banc practice at the CAFC?
    Thank you.

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