Federal Circuit Limits Intervening Rights to Cases involving Textual Claim Amendments

By Dennis Crouch

Marine Polymer Tech. v. Hemcon (Fed. Cir. 2012) (en banc)

In a fractured en banc decision, the Federal Circuit has held that statutory the intervening rights defense only arises when the text of claims are amended or new claims added during a post grant proceeding. In this case, the claim scope had been arguably changed under Phillips v. AWH based upon arguments made during a reexamination, but the text of the claims had not been amended. Following this decision, the accused infringers cannot claim intervening rights in this situation.

[T]he plain directive of the governing statute before us does not permit HemCon to invoke intervening rights against claims that the PTO confirmed on reexamination to be patentable as originally issued. To be sure, patent applicants’ actions and arguments during prosecution, including prosecution in a reexamination proceeding, can affect the proper interpretation and effective scope of their claims. But in rejecting HemCon’s request for intervening rights, we are not here interpreting claims. Rather, we are interpreting a statute that provides for intervening rights following reexamination only as to “amended or new” claims. The asserted claims of the ‘245 patent are neither.

As part of its ruling, the court noted its perspective that the PTO on reexamination is unlikely to consider a patent claim to be narrowed simply based arguments made by the patentee:

If, in reexamination, an examiner determines that particular claims are invalid and need amendment to be allowable, one would expect an examiner to require amendment rather than accept argument alone.

The doctrine of intervening rights is derived from the Patent Act, which indicates that, following a reexamination, a patentee cannot claim damages for pre-reexamination infringement if the resulting claims were in “amended form” and not “substantially identical” to the original claims. 35 U.S.C. §§ 252 and 307(b).

The dissent argued that any change to the scope of a claim during prosecution should be interpreted as an amendment and that, therefore, arguments and statements by the patentee that would result in a modified claim construction

Split Decision: Only ten of the Federal Circuit judges participated in the decision. Thus, a majority needed at least six votes. As it turns out, only a portion of the majority opinion received six votes. The entire majority opinion was written by Judge Lourie and joined by four other judges: Chief Judge Rader and Judges Newman, Bryson, and Prost. The first half of the majority opinion discussed claim construction issues and the second part discussed the intervening rights defense. Judge Linn brought the final vote for the majority, but Judge Linn only agreed to the portion of the opinion focusing on intervening rights. Judge Dyk wrote in dissent and the entire opinion was joined by Judges Gajarsa, Reyna, and Wallach. In parallel fashion, the dissent first discussed claim construction and then discussed intervening rights. Judge Linn joined the claim construction portion of the dissent but not the intervening rights portion. Thus, in the final tally, claim construction was split 5-5 and intervening rights issues was divided 6-4.


39 thoughts on “Federal Circuit Limits Intervening Rights to Cases involving Textual Claim Amendments

  1. 39

    You might ultimately be right in your prediction, but I don’t think Zolin controls the question. There, the affirmance by an equally-divided court concerned a completely separate issue (conditions placed on the production of tax documents) than the majority holding concerning a claim of a-c privilege for material on audio tapes. Both issues were decided by the district court and the 4-4 affirmance did not moot the a-c issue.

    Here, the intervening rights issue was not addressed by the district court, and with the 4-4 affirmance of the claim construction, intervening rights are not at issue on appeal. The majority styled the intervening rights holding as an alternative basis for affirmance, but I think it’s better described as the resolution of a question not before the court. In other words, dicta.

    As for Judge Dyk’s dissent, I agree with you that it’s not binding on anyone. I meant only to suggest that it might reveal how the dissenters will treat the intervening rights holding prospectively.

  2. 38

    I disagree. O’Gilvie seems more than just relevant on the intervening rights issue due to the majority vote. Here, a single rationale for affirmance has a majority. Even assuming, arguendo, no clear majority in control, the intervening rights issue could be seen as a narrowest ground with majority vote. Marks v. United States, 430 U.S. 188, 193 (1977). Moreover, the Supreme Court has similarly had decisions split on issues. See United States v. Zolin, 491 U.S. 554 (1989). See also, United States v. Hamrick, 43 F.3d 877 (4th Cir. 1995) (en banc). Furthermore, Judge Dyk writes in dissent, and all such statements, including any characterization of the opinion for the court, are necessarily dicta.

  3. 37

    Not very good odds. It has a shot due to the messiness of the en banc decision, but I think the Supreme Court’s most likely reaction to that mess is to give the CAFC time to resolve its internal debate re intervening rights.

  4. 36

    So, what are chances that SCOTUS will take this one? $34M judgment – have to think a petition will be filed.

  5. 35

    You assume that my position is absolutist.

    I assume nothing of the sort. I am addressing your stated postion and the Roe v. Wade case. Your position is not supported by that case. Quite in fact, my analysis, with which you agree, carries with it that conclusion that your position does not stand.

    If you wish to challenge the conclusion, then by all means, fire away. The privacy issue that was discussed in Roe v. Wade is on point and clearly vindicates the right of the State to interfere with the privacy interest under discussion.

    It is clear where the balancing is acceptable – at that point where the State’s interest overwhelms the individual’s privacy interest. Clearly the State has a legitimate legal interest in the potential of life of a viable fetus. Just as clearly, this legitimate legal interest overwhelms your stated position.

    At the very least, we have established the legal framework that the State has the proper power to intercede into privacy interests and that there is no such thing as a consitutional right to have or to not have a child. Interests are not rights.

    As a bonus, we established the legal framework without excursions into Personhood or religion.

  6. 34

    You assume that my position is absolutist.  It is not, which I acknowledged many posts ago.  When the state wishes to interfere with a private decision, the courts must balance the state's interests against the constitutional right at issues, which is the right of privacy, an essential aspect of liberty. 
    What I am suggesting is that Roe v. Wade only discussed one privacy issue:  the woman's health.  There are others.  Griswold is one. Sciavo is another.

  7. 33

    In the end, government attempts to interfere with private decisions concerning life and death were rebuffed by the courts.

    No they were not. At least, importantly to the degree concerning privacy rights that support your position. Read the decision again. Your interpretation does not fit with my analysis, which you say you agree with. The decision clearly allows the very government interference into the privacy interests when the State interests overwhelm those privacy interests. There can be no mistake that the State has such power.

  8. 32

    Constitutional Scholar, I agree with you on your analysis of Roe v. Wade. However, I would suggest that the zone of privacy extends beyond the question of a woman's health. If the child has a genetic disease, is deformed, or the like, the child will not have a meaningful existence. I would suggest that the parents have the right to decide whether the child should be spared suffering. I know this raises questions beyond abortion, but we faced such questions in the Schiavo case, did we not?
    In the end, government attempts to interfere with private decisions concerning life and death were rebuffed by the courts.

  9. 31

    “Aren’t you assuming that there will be no remains?”

    Keerect. Legally it is not human remains but rather medical waste. As such, it is relegated to the incinerator with the rest of the medical waste.

    As Ned says, then, no [DNA] evidence after the fact.

  10. 30

    O’Gilvie is relevant but not quite on point. There, the precedent applied was a 7-2 decision that rested on alternative grounds. Here, the evenly-divided en banc CAFC affirmed the decision based on the claim construction issue, and then a majority went on to affirm on an alternate ground with the intervening rights issue.

    My wild guess is that district courts will treat the intervening rights holding as binding precedent, while the CAFC judges will treat it as controlling or dicta based on whether they were in the majority or dissent of Marine Polymer Tech. After all, Judge Dyk’s dissent expressly called it dicta.

    Perhaps most interesting will be how Judges Moore and O’Malley (who recused themselves from this case) approach this question if they are on a panel that must address the intervening rights issue.

  11. 29

    Ok so not much impact. I guess the only scenario that may play out is a middle ground where D interprets argument in the PH one way and a court construes it another, then the D is ef’d. It seems more concrete is an actual amendment is made.

  12. 27

    Late term abortions are not constitutionally protected, IIRC

    Roe v Wade is an oft quoted and misunderstood case.

    It does not stand for an unequivocal right to privacy. Nor does it stand for a consitutional right to an abortion.

    The key in that case was a lack of balancing of the individual and the state’s interests in a state’s law that prohibited abortion without regard to the stage of the woman’s pregnancyfully recognizing viability of the unborn child being a legal interest of the State (as opposed to any argument of personhood). The important aspect overlooked is that the State’s interest becomes compelling and overrides the privacy interest at the point of fetus viability.

    Those advocating a pure “privacy” or “reproductive” right often do not grasp what the case actually holds. Likewise, those on the other side of the debate often misrepresent the “calamity” of the decision.

  13. 26

    So, let me get this straight. If I am going to produce a product and I rely on argument present in the prosecution history of a relevant patent, completely disavowing a limitation, and I include that limitation in my product, all things being equal, then intervening rights do not apply?

  14. 25

    …. I want my mommie!!!

    Your sister is busy helping find 6’s brother.

  15. 23

    Actually the klan parody stuff that was on that site was just an added bonus for MM. That happened to simply be the first site that google brought me when looking for aborted baby pictures.

    And, I’ll share some supar secrit infoz with you. I don’t have a bro.

  16. 22

    I see the redneck in you is coming out … I thought I could smell the taint from your post.

  17. 20

    They may, but it would appear that it should be binding if not reversed. The intervening rights holding was explicitly named an alternative ground with majority vote. O’Gilvie v. United States, 519 U.S. 79, 84 (1996). Would be interesting to see the vote if it came up for en banc review again. Wonder if any Judge in dissent now would vote against review on stare decisis grounds.

  18. 19

    Alright Ned I appreciate your response, obviously the folks in the thread bring up other points, but all of us can best continue this discussion in another forum.

    I was also unaware that she had a constitutional right to decide whether to have or not to have a child as I had thought that the Roe decision and others had simply said that women (and presumably men) have a right to privacy that prevents the government from outright preventing the abortion from taking place. But I will look into this on my own and do not need further help on that subject from the members of this forum.

  19. 18

    Aren’t you assuming that there will be no remains?

    Not to get involved in something that is not patent, but if there is a contested case, disposal of medical evidence is not likely.

    Just saying.

  20. 16

    after the fetus is gone, there is no evidence to test

    Are you F’n serious?

    That’s patheticly ignorant. Your grasp of forensic pathology is as non-existent as your morals.

    Not to derail the thread, but shallow and incorrect reasoning in the face of the single most important facet of life, which is life itself demands a rejection.

    Shameful, disgusting and abhorrent.

  21. 15

    Do you have a view on just how the Office is going to list on the reexamination certificate scope disavowals from “the original, correct” claim construction? According to the dissent, these are amendments and should be listed.

  22. 14

    The dissent also made the point that the scope change it was talking about here was a scope change with respect to the original, correct construction. Implicit in this formulation, is that arguments and even amendments made in response to BRI will NOT necessarily invoke intervening rights. There would have to be a separate construction to determine what the correct claim construction was before the disavowal, and then determine whether there was a change from that scope.

    From the dissent:

      “To be sure, not every argument during reexamination
      should give rise to intervening rights, but intervening
      rights should be available where an argument during
      reexamination rises to the level of a clear and unambiguous disclaimer or disavowal of the original, correct claim
      construction.” Last page, page 25, of the dissent.
  23. 13

    My own view is that the Lurie opinion was correct here. The specification clearly stated that the inventive compound had no reactivity on all four of the listed test process. The apparent distinction between the two opinions was that the Lurie opinion construed the term in conjunction with the claimed compound, while the Dyk opinion construed the claim term in the abstract. Thus, the result changed depending upon whether one was construing the term “biocompatible” or whether one was construing the term “the biocompatibility of the claimed compound.”

  24. 12

    6, Unless they are married, there is no legal presumption that the child is his. Moreover, after the fetus is gone, there is no evidence to test.

    If the man is married to the woman, things might be a little different. If she acts unilaterally regardless of her husband’s consent, this should be grounds for divorce, etc., but neither she nor her doctor should be liable to her husband to the extent that she has a constitutional right to decide whether to have or to not have a child.

    Late term abortions are not constitutionally protected, IIRC. It would be interesting to see if there are any cases on point where a husband sued for wrongful death of his child at the hands of the abortionist.

  25. 10

    Hey Ned, I would like your pro-choice opinion on something I had been thinking about. I’d like to say up front that I don’t want to derail this whole thread, so I would prefer if we can keep this to just my one question and one answer if you should so desire to provide one.

    The facts: Man gets woman pregnant through consensual sex, they’re not married (although this could just as well be that they are married). Girl wishes to have an abortion and does. Man is against the abortion. Why no wrongful death civil liability for the woman since she ended the man’s child’s life, or chance at life or whatever you want to call it? And if the answer is because statutes simply do not allow for it at this time I’m curious as to whether you would support such laws being enacted or not and if you so happen to have it on hand a little about why.

    I just thought about it because I heard a bit about all these wrongful death suits happening in the news lately and wondered why a man whose child is ended by its mother against his wishes should/does not have a civil remedy. I mean, let’s be clear, on at least one night that woman consented to make a baby with him. I then looked it up and apparently some states have started proposing such laws or ones allowing for a case against the abortion provider anytime or in some cases only against the provider when they don’t follow every single letter of every abortion statute present in that state.

  26. 9

    Yeah I ha te it when I agree with both the dissent and the majority and can’t make up my mind which way the case really “should” go. Although, if I had to take a wild stab I would have gone down the path of the majority. Especially considering the facts of this case.

    “The claims remaining in the patent are the same as originally claimed.”

    Yeah except minus dependents that were causing them to be otherwise interpreted.

    I don’t know, I think they should have held this case even closer to its facts. Like super narrow.

  27. 7

    Well this sure is an odd appellate result. I suspect that district judges and future CAFC panels are going to reach differing conclusions on whether the intervening rights holding serves as binding precedent.

  28. 6

    It is beyond strange that Rader here seems to have switch sides on an issue Dennis posted on just this week: Which cannon controls: claim differentiation or the specification.

    In Digital Vending, /media/docs/2012/03/11-1216.pdf,

    Rader used claim differentiation to expand the scope of some claims beyond a clear disavowal of scope in the specification. In this case, he sides with Lourie that a clear disavowal set forth in the specification trumps dependent claims that directly and unambiguously are inconsistent with the disavowal.

    Unfortunately, the decision on claim construction was only 5-5. We will have to away a further en banc case to decide this important question.

  29. 4

    “Fractured” indeed, Dennis. But the ruling went 6 to 4 on the intervening rights question. Judge Lourie’s opinion may be considered “dicta,” but with 5 other Federal Circuit judges joining his opinion saying that intervening rights only applies to “amended or new” claims in reexamination, what do you think is the likelihood that a district court (or subsequent Federal Circuit panel) will ignore Lourie’s opinion?

  30. 2

    Only five of the Federal Circuit judges participated in the decision. Thus, a majority needed at least six votes


  31. 1

    What good are decisions if nothing has been decided?
    What good are decision makers if they do not make decisions?

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