Broadening and Narrowing Claims Post Issuance

There is some amount of tension between the Federal Circuit’s 2012 en banc decision in Marine Polymer Tech. v. HemCon (Fed. Cir. 2012) and the court’s recent finding in ArcelorMittal v. AK Steel (Fed. Cir. 2015). Both cases involved post-issuance proceedings where a claim’s scope had changed even though the claim itself had not been amended.

The underlying issue in Marine Polymer was whether a would-be infringer could claim have intervening rights under 35 U.S.C. §§ 252 and 307(b) if the scope of an non-amended claim was substantially changed during a reexamination.  The en banc Federal Circuit held that the a claim whose scope is narrowed-by-argument during a reexamination did not impact statutory intervening rights because the language of 307(b) focused the intervening rights only on a “amended or new claim.”  Because the claim was not actually amended, the law was not triggered.

In ArcelorMittal, we had a similar framework – in reissue the patentee expanded the scope of its non-amended independent claim based upon an a change to a dependent claim.  In its decision, the Federal Circuit found that the changed scope should be seen as a broadening of the original claim — triggering the prohibition against a broadened reissue (more than two years after the original patent issuance).

The difference between these two cases seems to primarily stem from the statutory language — the reissue statute and broadening doctrine seemingly do not require an “amendment” in order to be triggered while the intervening rights statute does. (I should note that this distinction is on somewhat shaky grounds).

The new inter partes review statute appears to closely follow that of the reexamination statute — indicating that intervening rights will stem from an “amended or new claim.”  The statute also provides that amendments “may not enlarge the scope of the claims of the patent.” 35 U.S.C. § 316.  The one question left unclear is the impact of broadening-through-claim-construction during the inter partes review.

79 thoughts on “Broadening and Narrowing Claims Post Issuance

  1. 12

    Dennis, I do not understand this comment: “the Act significantly expands 35 U.S.C. § 285 regarding attorney fees, in part by mandating, absent special circumstances, that attorney fees be awarded against a non-prevailing party if the position or conduct of the party was not objectively reasonable. That change, which follows recent trends in case law (and now adds nothing new to the law)…”

    How does mandating an award of fees, absent special circumstances, “add nothing new to the law?” Current law grants the district court discretion to deny an award of fees even if the non-prevailing party’s positions were deliberately frivolous and malicious. The district court just can simply decide, under current law, that he or she doesn’t feel like awarding fees even if the case is exceptional. There’s no requirement under current law of Section 285 that mandates an award fees, under any circumstances. The proposal that you outlined, which would require a fee award in the “objective unreasonable” situation, seems like a very big change to me, certainly not something that “adds nothing new to the law.”

  2. 11

    Inter partes review may be expected to get the same treatment under Marine Polymer, assuming the CAFC doesn’t abandon or whittle away Marine Polymer — or The Supremes don’t reverse it. You can find a nice wall chart, suitable for framing, on this very topic in Villar, J.M., “Marine Polymer and Dissymmetry of Intervening Rights in the AIA”, 24.1 Fed. Cir. Bar J. 91 (2014), a very brilliantly written article if I may say so myself. :) heh, heh . . .

    1. 11.1

      Mr. I, do you predict that all claims in a patent will be declared invalid if one adds a dependent claim that arguably broadens an independent claim by implication?

  3. 10

    Suppose my patent has claim 1, a widget, and claim 2, the widget of claim 1 which is blue. After issue prior art is uncovered showing a yellow widget, but the blue widget is not obvious over that prior art. So in the context of IPR or reexam (or maybe reissue, although reissue is supposed to be used to correct the patentee’s mistake, not the PTO’s mistake, which this one is), I re-write claim 2 as independent and cancel claim 1, or move claim 2 into claim 1 (logically the two actions are the same thing). Why should anyone who makes or sells a blue widget have intervening rights in such a case? The blue widget was claimed before the post-grant proceeding, and it’s claimed after, and the blue widget claim was never invalid. Plus, were I to have sued a competitor for infringement of the unamended patent, I could have chosen to assert only claim 2, so that claim 1 wouldn’t have been in play. Under these circumstances, it makes no sense to say that the competitor has gained intervening rights. But from the discussion here, it sounds like the CAFC says that there are intervening rights. Very strange. And troubling.

    1. 10.1

      Makes no sense also to me. I look forward to a justification of the Federal Circuit thinking, as cogent and clear as this contribution from Scratching.

      Incidentally, with the AIA, post-issue reviews, and the switch to First to File, I predict an increased emphasis in the USA on dependent claims that represent serious, thought-through, fall-back positions, ready for the moment when the independent claim turns out to be untenable. If only to curb all this nonsense about “intervening rights”. I’ve always thought it bizarre, how little attention US drafters pay, to a good set of dependent claims. Perhaps, until now, there’s been no need.

      1. 10.1.1

        Wow, a point on which Max, Anon, and NW agree.

        Let me add another wrinkle: compare to 35 USC 154(d) – provisional rights based on a published US or PCT application. 154(d)(2) says that “The right under paragraph (1) to obtain a reasonable royalty 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.” I don’t think that part of the statute has ever been interpreted by a lower court, let alone the CAFC. This leaves open the question: if a broad independent claim of the published application is amended during prosecution so that it’s of the same scope as one of the published dependent claims, and an infringer had notice of the published application, is the patentee entitled to damages based on the published dependent claim?

        Put in the context of the above hypothetical, if claim 1 of the published app reads “A widget” and claim 2 recites “The widget of claim 1 which is blue”, and during prosecution the examiner cites the yellow-widget prior art, if the applicant amends claim 2 to independent form and this then issues as claim 1 of the patent, is the patentee entitled to damages for infringement of this claim by an on-notice infringer that occurred between publication of the application and grant of the patent? If not, what’s the policy reason for denying the provisional protection?

        1. 10.1.1.1

          FYI:

          INNOVENTION TOYS, LLC v. MGA ENTERTAINMENT, INC.
          link to cafc.uscourts.gov

          This is the first case that I know of where damages were awarded prior to issuance of a patent based upon provisional rights. The patent owner notified the infringer of a its “infringement” of the published application claims. The only material issue on the issue of damages was whether the claims were changed in scope – they had been amended during prosecution. But the Federal Circuit affirmed that the scope it not been changed based upon prior cases involving reissue patents.

            1. 10.1.1.1.1.1

              Patent Bob, its my business. But also, I have been keeping up since I began practicing law. Force of habit.

              1. 10.1.1.1.1.1.1

                Is your business litigation? I’ve been keeping up, too, but since I’m a prosecutor, I tend to ignore results that don’t directly influence prosecution (and the one you quoted is at best tangentially related to prosecution).

                You’re doing well at building an amazing volume of cases.

                1. It would be even more impressive if he learned how to objectively apply the cases (and not fall victim to the Ned-6-is-an-Einstein-because-he-agrees-with-my-desired-end-view syndrome. You know, that anyone-that-crosses-Ned’s-Holy-third-rail-is-automatically-excommunicated syndrome.

    2. 10.2

      Unfortunately the only logic is to weaken all patents. That is the logic that the Google judges are steered by.

      And, by the way, I wonder how many readers understand the importance of re-issues to the patent market. They are very important because often the way it works is patents get put up for sale shortly after they issue then they are purchased and a re-issue is filed to get a different set of claims that the purchaser wants. (Despite the maelstrom of propaganda that floods this board the reality—you know that thing that actually occurs separate from the Google propaganda–is that it is very hard to get claims that aren’t easily designed around and purchasers are rarely satisfied with the claims.)

      So, big picture, limiting the claims from re-issues is a major crippler of the patent system and the Google judges know that.

      1. 10.2.1

        Thanks for that, Night. I can relate to the idea that the purchaser wants to re-write the claims. So would any purchaser, given the chance.

        But any patent system has to balance the power given to such purchasers with the legal certainty available to those who perforn FTO analysis on the patent prior to its sale and purchase. Seems to me that an “intervening rights” system serves to strike that balance, when the claims are re-written.

        Of course, when there is no re-writing, just a dependent claim being re-presented as independent, I’m with Scratching, that there should not be any intervening rights.

        1. 10.2.1.1

          Glad to hear MaxDrei that you are with me on this as well (see 3.1.1.1.1.2.1 below).

          I am reminded that even a broken (analog) clock is right twice a day (and this is but your first “being right” of the day!) ;-)

        2. 10.2.1.2

          Rewritten?

          They were not rewritten in this case yet they were held invalid.

          How does that strike you, Max?

      2. 10.2.2

        At the risk** of appearing to “high-five” you Night Writer, I would point out that it is not only the “Google Judges” that this denigration of patents, the patent system, and (gasp) making money from patents that is (relentlessly) afoot.

        You are absolutely correct in that the patent system is systematically under attack. From the Left. From the Right. For different reasons to be sure, but under attack without a doubt.

        1. 10.2.2.1

          **the risk, of course being of the “Oh Noes, Malcolm might have his feelings hurt” variety, of which we all should be politely concerned with…

          /off sardonic bemusement

    3. 10.3

      Scratching Head, I don’t think you understood what the Federal Circuit had in mind here. It wasn’t the amendment to the claim that was the point. The claims held invalid were not amended.

      Take your example of a claim to the blue widget. Using broadest reasonable interpretation during an IPR, the examiner sites a turquoise widget. You argue that a blue widget is not a turquoise widget as anybody in the skill in the art would know.

      The claims are confirmed by the PTAB, but later, the courts rule that the scope have been changed because turquoise widgets were disclaimed. Based upon the so-called disclaimer, the infringer says he has intervening rights.

      We all know how the Federal Circuit will come out on this one if prosecution history other than amendments can change the scope of claim for purposes of intervening rights.

    4. 10.4

      If your hypothetical is that there was already in the patent as issued a narrower dependent claim that was both valid and infringed before, as well as after, a post-grant proceeding, and it is not further narrowed [for litigation] by prosecution history assertions made to distinguish prior art, that is not the same situation, and intervening rights should not necessarily apply to the assertion of THAT claim.
      Also, as you note, there is no obligation to sue on invalidly-overbroad claims.
      Also, a statutory claim disclaimer or dedication can be an alternative or supplement to a post-grant proceeding.
      [Yet another good reason to have more claims of varying scope in patent applications, rather than engaging in what Ned refers to as “penny wise and pound foolish” patent preparation and prosecution.]

  4. 9

    The district courts and the PTO have different standards for claim construction.

    In ArcelorMittal, independent claim 1 was construed broadly by the PTO and more narrowly by the district court. Consequently, the PTO allowed a dependent claim during reissue that was narrower than its construction of independent claim 1, but broader than the district court’s construction.

    The scope of non-amended claim 1 did not change in the PTO. The reissued patent was presumptively valid, but then held invalid by the district court under its claim construction as a broadening reissue past the two year cap.

    Since 318(c) only provides intervening rights with respect to new and amended claims, they should not arise as a result of claim construction, as in Marine Polymer (6-4 re intervening rights).

    1. 9.1

      Steve, The idea that an amendment to a dependent claim can change the scope of an independent claim requires an assumption that such an amendment automatically, and by law, changes the scope of its independent claim. That is not the law.

      This case is so beyond the pale as to be indescribably bad. It ignores precedent. And, from a policy point of view, it is outrageous.

    1. 8.1

      Yeah, that’s pretty much where we’re at today. The expanded cover by Bruce McCall, “The World Tomorrow”, is pretty cool, too.

      1. 8.1.1

        I can top you…

        This little story fits Malcolm and the Echos:

        While scientists have no clear understanding of the mechanisms that prevent the fact-resistant humans from absorbing data, they theorize that the strain may have developed the ability to intercept and discard information en route from the auditory nerve to the brain. “The normal functions of human consciousness have been completely nullified,” Logsdon said.

        link to newyorker.com

    2. 8.2

      Except, MM, a thinking person would realize that that cartoon very much supports patents. We have your static thinking in place when you interpret the cartoon. A thinking person would realize that if someone else is monetizing other people’s inventions that it won’t be long before those other people will stop inventing or stop getting support for their inventions.

      Dynamic vs. static thinking. It does to whether you have any understanding of a complex process that has created the greatest innovation engine in the world or not–you obviously do not.

      1. 8.2.1

        Malcolm indeed exhibits a serious lack of patent basics.

        As was noted awhile back (in a nod to Mr. Dudas in his post Reject-Reject-Reject life, in his finding and broadcasting an award winning historical piece (featured first at Dr. Noonan’s blog) – the U.S. Patent System has a foundation to be able to treat the patent right as fully alienable property in order to do the very “ grifting” thing that Malcolm despises. It is the very nature of the work product he supposedly creates. Is there any wonder then the venom from one such as he that is torn with such cognitive dissonance from his Beliebs and from his profession?

        1. 8.2.1.1

          Meanwhile, on planet Earth, reasonable people will continue to draw a distinction between skilled (a) people who innovate new compositions and describe them in physical terms and (b) bottom-feeding attorneys who sit around dreaming up ways to sue their content providers.

          Have fun pounding sand with Night Wiper, “anon.” You two make a really cute couple.

          1. 8.2.1.1.1

            …and yet again Malcolm making an issue with his canard that one optional claim format is somehow the only allowed claim format under the law….

            …while inserting his “feelings” based denigrations…

            [shrug]

          2. 8.2.1.1.2

            When MM starts name calling, you can be sure he doesn’t even have a specious argument left to wield.

      2. 8.2.2

        Night Writer,

        Did you not notice that the student monetizing the work of the other students is the one who was awarded the exclusive authoritative recognition for supposed “innovation” (i.e., the “First Place” ribbon)?

        This “thinking person” (okay, anon, take your predictable cheap shot) sees that same cartoon as reflecting on the deleterious effects of over-recognition of non-innovation.

        1. 8.2.2.1

          It is hardly a cheap shot, my dear friend the Count.

          I do “get” the intent of the cartoon as it is.

          I merely ask that you think past the mindset presented and recognize what those flailing against a core concept of the U.S. patent system unthinkingly miss.

          Attempts to denigrate the money aspect (the monotonous ad infinitum ad hominem of “grifter” and the like) is a bug, not a feature, when understanding the U.S. patent system.

          The cartoon misses on another level if the (lack of) thinking includes the notion that businesses methods – perhaps the ways of making money from others’ innovations – was an innovation in itself.

          As even Ned has recently pointed out, 4 (or 3) from the Supreme Court does NOT change the law (implicitly, explicitly, or otherwise), and business methods – as a category – may still be eligible for patents.

        2. 8.2.2.2

          Dobu,

          Of course I saw that and of course I get the point they are trying to make. Do you get that the cartoon ignores the basic workings of our innovation engine?

          Moreover, ask yourself whether monetizing other’s inventions is bad or good for innovation. I think the answer is it depends on whether those that innovated actually receive most of the money from the monetizing. What the AIA does it make that much harder and the new legislation makes it even harder still.

          You should read ipwatchdog more often. There are many articles there written by real patent attorneys (not Google purchased people.)

          What is clear is the patent system is becoming a system not for those people in the other booths but only for the Googles of the world.

          1. 8.2.2.2.1

            Just think, Night Writer, that if the innovation for better monetizing were patented (and justly rewarded), we would advance the art of monetizing innovations and the entire population (yes, EVERY innovation) would be better off with a higher likelihood of being put into use. The very same “real use” that many here use as a condemnation of patents that lie fallow.

            Of course, with more patents “in real use,” there would (quite naturally) be more law suits filed concerned with protecting these rights, and the “any law suit must be bad” crowd would only whine even more shrilly.

  5. 7

    There has been some assuming in comments here that claim narrowing cannot create “intervening rights,” or that that is a new idea. Note the 1997 Fed. Cir. decision that a reexamination claim narrowing creates intervening rights defenses like a reissue – Bloom Engineering Co. v. North American Mfg. Co., (Fed. Cir. 11/21/97), extrapolating from 35 USC 307(b). Bloom Engineering says that: “[35 USC] Sections 307 and 252 shield those who deem an adversely held patent to be invalid; if the patentee later cures the infirmity by reissue or reexamination, the making of substantive changes in the claims is treated as an irrebuttable presumption that the original claims were materially flawed. Thus the statute relieves those who may have infringed the original claims from liability during the period before the claims are validated.”
    {I remember being surprised to see this at the time. Also note the rationale for the intervening rights here, that the Court is in effect saying that an infringer was entitled to go ahead and infringe claims that were overbroadly invalid even though that was cureable later.}

    1. 7.1

      Thanks Paul, I didn’t know that.

      Inventor obtains patent, asserts a claim against an infringer, and files for a reissue to narrow the claim. Infringer infringes on the original claim and on the reissued narrower claim. But infringer gets intervening rights. It doesn’t make sense.

      Suppose the claims were narrowed because the law changed – e.g., KSR, Bilski, Alice, etc. So… the court made a mistake, but the inventor has to pay the price? Doesn’t make sense.

      Suppose the claims were narrowed because new art was found. So… the PTO made a mistake, and the inventor has to pay the price? Doesn’t make sense.

    2. 7.2

      As noted, I found this Fed. Cir. decision somewhat surprising at the time [especially considering its authors] but it is consistent with the principle that one cannot infringe an invalid claim. [Which BTW is still being challenged recently in another context – willfulness.] Especially a claim that has been removed from the patent by a reexamination or reissue as if it was never there ab initio.
      There are, of course, numerous other patent suits in which the patent specification may have contained, or was intended to protect, a real and valuable invention, but the patent owner never recovered anything because no infringed claims were also held valid.
      This is exacerbated by the efforts of too many companies to pay as little as possible for patent application preparation and prosecution. Including refusing to pay even a few hundred dollars for an independent prior art search before either filing or suing. Yet willing to spend vastly larger sums unsuccessfully trying to salvage defective patent claims in litigation. Also even though many defective patent claims are not the client’s fault, our legal system makes the patent attorney or agent the agent of the client for almost anything they do or do not do.

      1. 7.2.1

        Paul, I agree with the comment about penny wise and pound foolish. At conferences among patent counsel major companies, patent counsel seem to be competing among each other for achieving the lowest cost for obtaining a U. S. patent. The never seem to be any thought about enforcing any of the patents. Obviously, their bonuses and other compensation were measured by the number of patents per budget dollar, as if that were the only thing they counted.

        The same mentality was displayed by Kappos, ex of IBM where the size of the pile seems to count more than a quality of any particular patent, when he made it his prime objective to reduce the backlog and speed production. Quality (in terms of validity) was definitely put to one side.

        Obviously in contrast, Pharma must expect to enforce every patent they file and they obviously pay attention to quality.

        Would be nice to have an option to essentially defer examination except for formalities, and obtain not a patent, but a registration certificate that would have no presumption of validity. That way, the likes of IBM could amass piles of “patents” at little cost, while preserving valuable examination resources for companies who need patents and expect to enforce them.

        1. 7.2.1.1

          B$ in so many ways Ned.

          Quality has never meant rubber stamp in either Reject-Reject-Reject or Accept-Accept-Accept.

        2. 7.2.1.2

          Ned, the reason a system of patent registration without any substantive examination has never been politically viable [since the mid-1800s] is that it leaves huge numbers of patents with broad and undefined claim scopes hanging over and threatening commerce and manufacturing like a sky full of swords of Damocles.
          Since the U.S. public does not want to pay for a really thorough substantive patent application examination [check the U.S. exam fee], we have in effect a partial examination system which leave many patent claims at risk from a far more thorough prior art search by a defendant.

          1. 7.2.1.2.1

            Paul, I know full well that that is the reason that we don’t want unexamined patents out there.

            Perhaps we need a strong “prior user defense” with respect to unexamined patents. So long as use began before the unregistered patent was examined and granted, the prior user should have the full legal right to continue to use the patented invention.

            1. 7.2.1.2.1.1

              Ned,

              Your “scheme” boils down to a “gold-plating” that makes all but worthless the first stage of not gold-plating.

              Such a thin veneer of pure-vanity-but-no-meaningful-protection vehicle is quite simply D.O.A.

              1. 7.2.1.2.1.1.1

                anon, there has to be a penalty for no examination. Paul is right about the Damocles Sword.

                1. That’s not the point, Ned.

                  Instead, think about what you are asking for (hint: you are asking people to fork over quite a bit for a worthless non-gold plated version…).

                  Why would anyone be willing to go to such a system? Talk about your traps for the unwary…

      2. 7.2.2

        Thanks Paul, it’s refreshing to read thoughtful comments that are not extremely one-sided or biased. I agree, the principle that an invalid claim cannot be infringed is a pretty strong argument for granting intervening rights.

      3. 7.2.3

        Paul, after a claim has been declared invalid, one cannot infringe it.

        However, from a detrimental reliance point of view, it can be observed that by statute patents are presumed valid. This is a legal presumption that imposes upon the public a duty to presume that patents are valid. One cannot detrimentally rely on a position that patents are invalid. To do so would be to ignore the statute.

        The Federal Circuit of course has a different view, but the Federal Circuit is so off-the-wall on so many different issues that one wonders why we have such a court administering patent law.

        1. 7.2.3.1

          Ned, whether a Fed. Cir. decision is really “off the wall” or not depends on an objective and realistic appraisal of how likely it would be reversed en banc or by the present Supreme Court, not any patent attorney personal opinions. Likewise, statutory constructions.

          1. 7.2.3.1.1

            Paul undoubtedly are correct that off-the-wall should be reserved for the decisions that are without support, contrary to policy or well-established precedent.

            Such of course is the case with BMC Resources, a case without precedent, and inconsistent with the notion that Congress had no intention whatsoever of changing the law of infringement in enacting 35 USC § 271(a).

            And such of course is the case here were legislative precedent illustrates a Congress only intended intervening rights with amended claims, where there’s been no prior precedent in U. S. history where claims have been accorded intervening rights without an amendment, and where there is in no prior case in U. S. history were claims have been invalidated as being broadened without an amendment.

            Off-the-wall does not begin to describe just how outrageous these two decisions were and are.

            1. 7.2.3.1.1.1

              Ned,

              If you honestly are having issues understanding the decisions, I would be happy to outline the logic behind each. If you prefer to continue characterizing logical, well written opinions from intelligent judges as “off the wall”, feel free.

              It’s certainly okay to disagree with a result reached, as some of these issues are very complex and dissents evidence that an answer is not always clear, but you seem to be of the mind that the Federal Circuit just doesn’t know what it’s doing. In my experience with the court, that just isn’t true. The judges identify relevant issues very fast, and ask pointed questions to get at the issues. If you are particularly confused about a case, you can try listening to the oral arguments for that case posted on the CAFC website. It might give you some more insight into a particular case, and also might give you more appreciation for the level of understanding of the judges. One thing to keep in mind is that although the opinion reflects the holding of the case, there might be more issues or nuanced arguments presented in briefs or at oral argument that might address things you think the court didn’t think about.

              Overall, I just want to reinforce that I personally do not find the ArcerlorMittal holding to be “off the wall”, and I certainly am not alone among patent attorneys in that. It’s one thing to think that the opinion reaches the wrong result, but if you really think it’s that far off, then you should try to provide a logical explanation of why, and I would be happy to address it.

              Cheers!

              1. 7.2.3.1.1.1.1

                JCD, I was just listening to the Oral Argument. It seems the PO was arguing for a broader construction based on the results in the USPTO. He never argued that there was no broadening of the parent claim by amendment of the dependent claims — at least during Oral Argument.

                I haven’t read the briefs.

                The court should have simply decided that issue, but reverse and remanded for further consideration on the validity issue.

              2. 7.2.3.1.1.1.2

                Again, JCD, the PO does not seem to have even argued that claim 1 was no broadened by the addition of the dependent claim. The Federal Circuit simply “assumed” broadening: “The only relevant change is the addition of a dependent claim which has the practical effect of expanding the scope of claim 1 to cover claim scope expressly rejected by a previous claim construction ruling, and ArcelorMittal makes no argument that the reissue claims are otherwise narrowed.”

                Note the use of the term “practical” effect.

                Then the court goes on, “To permit later generated
                reissue prosecution history to inform the scope
                of the very same claim limitation from the original patent
                would run afoul of the basic inquiry laid out in Anderson
                and Tillotson.”

                The bottom line is that the court simply assumes prosecution history can broaden a claim from a prior “final” claim construction ruling where the PO is subject to issue preclusion and is bound, without any amendment to the claim itself. There remains a severe problem with this case.

                What the court is doing is throwing the book at the PO for his attempted collateral attack on an adverse claim construction order. But the overall result here is unacceptable.

  6. 6

    Thus I claim a widget. The examiner says that X reference discloses a widget. The argument is made that the X reference does not disclose a widget. This necessarily narrows the scope of the claim so that the claim no longer covers what is described in the X reference.

    That’s only true if the specification doesn’t define the term.

    There are numerous opportunites for applicants to eliminate the loss of intervening rights during re-exam and reissue, if those rights are deemed to be sooper dooper important. The first and foremost is write a decent specification that defines terms with as much detail and clarity as possible. That eliminates the “reasonable interpretations” that are broader than the interpretations you wish for. The second is to do a great prior art search so that you are not later “surprised” by what gets turned up in litigation and use that prior art search when drafting your claims (both independent and dependent claims). The third is to pay attention to blogs and commentary therein where thoughtful people are explaining how things are going to actually roll when a junky hand-wavy “do it on a computer” information processing claim is asserted. Arguments about “non-analogous art” (for example) that work on certain Examiners 20% of the time are almost never going to fly in an inter partes dispute where there is an articulate forward-thinking attorney on the defense holding the Examiner’s hand.

    1. 6.1

      That’s only true if the specification doesn’t define the term.

      We’ve seen how the layers of your eyes are laminated shut to the problems of your view, Malcolm.

      You being blind wanting to hold anybody’s hand is aphorismistic (and not in a good way for you).

      1. 6.1.1

        Ah anon, king of the nonprecedential opinion…

        The lamination application 11/217904 has not yet been published. It is, as I have said multiple times before, entirely unclear as to what happened in that case.

        I, for one, am waiting with bated breath for its publication.

        1. 6.1.1.1

          Sad,

          You are indeed sad, as my jest simply does not need to wait for the decision.

          Wake up son.

  7. 5

    DC said: The difference between these two cases seems to primarily stem from the statutory language — the reissue statute and broadening doctrine seemingly do not require an “amendment” in order to be triggered while the intervening rights statute does.

    Regardless of where the difference between those two cases stems from, I think it makes sense that intervening rights should arise only when a claim is broadened. An infringer continues to infringe when a claim is narrowed. Why should there be intervening rights?

    1. 5.1

      Genghis, this is the rule every else in the world. We alone let infringers who infringe both before and after narrowing off the hook.

      Why?

      Why is the Federal Circuit so pro-infringer is a better question.

      1. 5.1.1

        Federal Circuit so pro-infringer is a better question.

        Because they have been brow-beaten by the Royal Nine.

      2. 5.1.2

        We alone let infringers who infringe both before and after narrowing off the hook.

        Why?

        Those infringers are only “off the hook” for the “infringement” that occurred before the problems with the claims were fixed.

        Please explain why should someone be “on the hook” for practicing an invalid or ineligible junk claim.

        If you think there’s a reason to put people “on the hook” for that, then take your argument to its logical conclusion: victorious defendants should still be required pay for all “infringing” actions that take place before they succeed in invalidating the patent in court.

        Seriously. Let’s say the PTO grants me a claim to “the world and everything in it.” You think “infringers” of that junk claim shouldn’t be entitled to intervening rights?

        1. 5.1.2.1

          I think it depends on the problem in the claim. Are you saying that the type of problem that was fixed in the claim should play no role in deciding whether or not intervening rights should be granted?

  8. 4

    Asserting that an unamended claim has one scope before argument and a different scope after argument is problematic. Patent disclosures are always supposed to be read as if by a PHOSITA at the time of the invention. Thus claim terms should be treated as having a static, objective meaning that is unchanged by the subject reading them. If argument alone somehow changes how a claim is read with no change in the claim itself, it needs to be held that the claim always had the “new” scope, the argument has merely clarified what that scope is. This usage needs to be consistent with enforcement of patented claims. When the courts compare patented claims to an accused infringing product, they inherently invoke a different scope than the examiner that allowed the claim, not just because the examiner uses a broader standard, but because it cannot be expected that the examiner made the same comparison. The specific questions asked during litigation necessarily refine the scope of the claims at issue, perhaps even broadening the scope from what the examiner had in mind if the claims are being compared to products the examiner never considered. But no one can reasonably claim intervening rights in that case because we don’t make the above mistake of pretending that the claim in and of itself has changed, only that the reader has. Does this have the potential of screwing over people because the PTO changes their minds during reexam? Of course, but the statutes already require that the claims are clearly understood at the time of issuance and this must be presumed on reexam if unamended claims are still deemed to be allowable.

    1. 4.2

      ed, welcome comment. The whole idea that unamended claims can change in scope for intervening rights or valid is the major problem with this case.

  9. 3

    Since the patent owner in an IPR is to trying to distinguish the challenged claims from the petitioner’s cited art [not arguing for infringement] a patent owner is highly unlikely to be making arguments in an IPR for claim construction scope broadening. [Although it was done at least once]. Furthermore, it does not seem logical that an IPR (BRC) claim construction would be narrower than a patent litigation claim construction, or controlling?

    1. 3.1

      Paul, claim construction in an IPR is BRI, which necessarily is broader than a claim construction in court. Thus the claim construction in most IPRs will be broader than the claim construction in court. What does this mean? Are all claims coming out of an IPR going to beat declared invalid because it claim construction in IPR was broader?

      This is nonsense.

      1. 3.1.1

        Ned, was “beat” a typo for “be” in your last sentence, or are you referring to a claim challenged in an IPR that is NOT found invalid in that IPR? [In which case, yes, it will be very difficult to later challenge that claims validity in court based on prior art patents or publications, but not on 101, 112, an on-sale bar, public use, prior products, wrong inventors, or any other invalidity basis since IPRs have no jurisdiction for any of those other issues.
        If the IPR challenged claim is not re-allowed in the IPR [or on appeal from the IPR] then of course it is no longer assertable in court so all claim scope arguments become moot.
        As others are noting, those who rely on alleged claim limitations that are not actually in the subject claim, or in any fallback claim, or at least in a clear definition of a claim term in the specification, have been taking a serious risk.
        Furthermore, if the PTO would treat reissues with the expedited priority they deserve perhaps more patent owners would use them? That is, do a proper pre-filing [pre-suit] investigation to find prior art they are likely to get hit with in an IPR, and use a reissue to fix their claims ex parte before suing. Rather than filing lawsuits without any serious validity investigation and naturally often getting hit with better prior art in IPRs than U.S. examiners find in their very brief [and low-fee] prior art searches of applications.

        1. 3.1.1.1

          Paul, “be” not “beat.” I use Dragon, and there are some funny mis-recognitions at times.

          The problem I see about IPRs is that there is no specific limitation in the statute about intervening rights and 251. This is not mean that there will be no intervening rights, it just means that the limitation in the reexamination statute that intervening rights will be confined to amend the claims is not present in the IPR statute.

          This is why it is important that there be a general rule that there is no possibility of intervening rights unless there is an amendment to the claims that changes their scope, or that there be an amendment to the specification that effectively does the same thing. Since the latter is specifically forbidden by statute, “no new matter,” there should be no issue about amendment to the specification changing scope.

          Thus the way we have it if arguments about prior art or deliberate claim construction rulings in the PTO can effectively change the scope of claims without amendment then there will be intervening rights with respect to virtually every IPR. This cannot possibly be correct.

          Regarding reissues, unless this case is overturned en banc, or legislatively overruled, almost every reissue will result in intervening rights. Thus, they will not be used as a vehicle to firm up the patentability of issued claims because to do so will be to give up any damages that may be out there until the reissue patent is granted. That’s a hard penalty for distinguishing prior art based upon argument.

          1. 3.1.1.1.1

            Ned: Regarding reissues, unless this case is overturned en banc, or legislatively overruled, almost every narrowing reissue fixing a defect in the claims will result in intervening rights.

            It’s not clear to me why this is a big problem for the patent system.

            Seems like a feature, not a bug.

            1. 3.1.1.1.1.2

              Reissue is a clearly a desirable option, where the alternative to a reissue [or ex parte reexamination or AIA “Supplemental” Examination (also ex parte)] by and for the patent owner that is just narrowing claims enough to ex parte distinguish previously unconsidered prior art [and potentially still infringed], is entirely losing one’s valuable claims in litigation or in an inter partes post grant proceeding.

              Since reissues are optional and solely by patent owners doing so to fix known problems with their claims, does the above complaint that “almost every narrowing reissue fixing a defect in the claims will result in intervening rights” represent an argument for some kind of Constitutional or divine right to be able to sue anyone on KNOWINGLY defective patent claims? [Obviously not, since that practice is now very much more dangerous, with greatly increased sanctions as well as fast post-grant proceedings.]

              1. 3.1.1.1.1.2.1

                Your focus is off Paul.

                No one is talking about suing or collecting on bad claims.

                The point here is that intervening rights removes some of the “Justice” collectable on what are finally determined to be good rights (just narrower).

  10. 2

    Dennis, the problem is much more severe than you seem to appreciate. Any change in scope leads to intervening rights. While the re-examinations statute may limit the damage to new or amended claims per Hemcon, as a practical matter reissues are all but finished as a viable alternative because of the holding of this case. Any argument against prior art will narrow the scope of the concerned claims by claim construction leading to intervening rights. This is absolutely the death of reissues.

    Ditto IPRs. Section 251 really is a codification of pre-existing Supreme Court case law which is not been abrogated. Thus an IPR that results in narrowed claims by claim construction may invoke intervening rights. No court is held such, but you can bet the issue will arise and will arise very soon because of this case.

    Thus this case represents the ultimate horror for patent owners. If this case is not overruled by an en banc Federal Circuit, it must be overruled by legislation.

    1. 2.1

      I also dispute that independent claims are necessarily broadened by amendments to dependent claims. No prior case has held that the scope of an independent claim is necessarily controlled by the scope of a dependent claim. Rather, it is the law imposed by statute that if a dependent claim is broader than its parent, by statute that dependent claim is invalid.

      This case for the 1st time seems to hold that the construction of an independent claim is controlled by the construction of a dependent claim. That is contrary to controlling law, and is by itself and error in this case.

    2. 2.2

      Ned: Any argument against prior art will narrow the scope of the concerned claims by claim construction leading to intervening rights. This is absolutely the death of reissues.

      I don’t think so. A valid patent is infinitely more valuable than an invalid patent, even where some party has intervening rights.

      1. 2.2.1

        MM, perhaps broadening reissues will remain in vogue, but not reissues to correct minor defects. But if a reissue is necessary for validity, then yes.

  11. 1

    It seems as if the PTO could diffuse some of the “tension” by diligently requiring applicants to amend their claims rather than accepting scope-shifting arguments. The difficulty with that implementation, it seems, is determining when claim scope is, in fact, being changed. At the very least, the presentation of new art to the office accompanied by an argument that a claim term doesn’t read on that art because of something in applicants’ specification (as opposed to reliance on a broad, reasonable dictionary definition for that term) would seem to raise a big red flag that an amendment is called for.

    1. 1.1

      I’ve been saying this for years. So much mischief is caused later down the road when claims aren’t amended in those situations.

    2. 1.2

      Malcolm, anytime someone distinguishes the prior art, there’s a strong likelihood that there is a disclaimer someplace in the argument.

      Thus I claim a widget. The examiner says that X reference discloses a widget. The argument is made that the X reference does not disclose a widget. This necessarily narrows the scope of the claim so that the claim no longer covers what is described in the X reference.

      Now the problem is that the patent office is using broadest reasonable interpretation, not the construction in court. Thus the argument should be whether as properly construed the X reference discloses a widget. But that is not that way the courts seem to operate. They do not seem to recognize that the patent office is using broad as reasonable interpretation and they do not go through the exercise of conducting a claim construction without reference to the disclaimer to see whether the claim scope before and after has changed.

      Somewhat complicated. But the legal issue is whether the claim scope before the patent office proceeding and the claim scope after the patent office proceeding has changed. This requires two, not one, court constructions.

      1. 1.2.1

        Without the same construction protocols, any attempt like what Malcolm suggests is – and should be – dead in the water.

        As I recall, when I floated the idea here awhile back that the Office actually in at least some type of claim construction to the court-style (which of course would be binding on the applicant), several of my usual detractors had their reflexive conniptions.

        Go figure.

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