Intervening Rights 2015

R+L Carriers v. Qualcomm (Fed. Cir. 2015)

Here’s the rough timeline:

  • R+L sued Qualcomm for infringement;
  • R+L then petitioned for ex parte reexamination of its asserted patent, and that filing resulted in the asserted claims being amended and then confirmed as patentable;
  • And, before the reexam was completed, Qualcomm stopped its allegedly infringing activity.

The in the case then is whether the amendment during reexamination allows Qualcomm to entirely avoid liability for pre-reexamination acts through a doctrine known as “intervening right.”

Substantially Identical: The Patent Act provides that back-damages for pre-reexamination infringement is only available if the reexamined claims are “substantially identical” to the original claims.  This rule stems from the reissue statute, 35 U.S.C. § 252 (a reissued patent shall have the same effect as the original patent “in so far as the claims of the original and reissued patents are substantially identical”) coupled with the reexamination provision, 35 U.S.C. § 307(b) (“a reexamination proceeding will have the same effect as that specified in section 252 for reissued patents”).

The Substantially Identical test is pretty tough standard. Although it does allow for some amendment, an amended claim will basically fail if the scope of covereage is not identical. As interpreted by the courts, the “substantially identical” standard is judged objectively and it is irrelevant as to whether the patentee thought the change was substantial or not.

The changes: The patent here is directed toward a method of “transferring shipping documentation data … from a transporting vehicle to a remote processing center.”  In the original patent, R+L had failed to include the word “comprising” and instead just put a colon following the method claim preamble. In addition, the original claims included a final step of preparing “a loading manifest . . . for further transport of the package on another transporting vehicle.”  During reexamination, the patentee added the limitations that it is an “advance” loading manifest “document” for “another transport vehicle.”  In issuing the reexamination certificate, the USPTO relied upon this last change because the prior art did not include preparing “an advance loading manifest document for another transporting vehicle.”

The Federal Circuit relied upon the examiner’s statements here to interpret the claims – finding that the amendment did change the claim scope:

The examiner expressly stated he was allowing amended claim 1 because “the manifest discussed by [the prior art] is a manifest for the current shipping vehicle and not an advance loading manifest document for another transporting vehicle.”  In other words, the examiner’s focus in allowing the claims was … on the additional limitation that the advance loading manifest be “for another transporting vehicle.”  … [T]he examiner’s commentary reveals a method that would be covered by original claim 1 but not amended claim 1: the process of preparing a loading manifest “for the current shipping vehicle.”

In its briefing, R+L acknowledges that the claims were allowed over the prior art because it agreed to add the “for another transporting vehicle” limitation. As R+L stated in its interview summary during reexamination, addition of “loading manifest document for another transportation vehicle” resulted in a tentative agreement that the amendment would overcome the rejections over the prior art. … R+L clearly understood that it was limiting the scope of its claims in another way to get around the prior art.

Thus, amended claim 1 is not “substantially identical” to original claim 1 because original claim 1 encompassed scope that amended claim 1 does not. Accordingly, we conclude that amended claim 1 is not “substantially identical” to original claim 1.

As I mentioned earlier, the reasons for the amendment do not directly impact whether the amendment is substantial or not. However, the above quotation from the opinion shows how those reasons do impact the claim construction which will then impact whether the amendment is substantial.

What’s Important about This Case: The intervening rights doctrine discussed here is not new and the results are not surprising once the claims were construed.  The real element of importance of this case seems to be claim construction – and particularly, the heavy reliance placed upon the examiner’s statements during prosecution regarding the claim coverage.

= = = =

Although reexaminations are on the decline, the PTAB trials are on the rise.  Under the AIA, intervening rights will also be generated whenever a patent claim is amended in an inter partes or post grant (including CBM) review. See 35 U.S.C. § 318(c) and 328(c).


45 thoughts on “Intervening Rights 2015

  1. 5

    Is it a good idea, especially in a reexamination, to leave the examiners statement of “reasons for allowance” on the record completely un-rebutted? Even if entry of a responsive paper by the patent owner would be rejected in the reexamination they would be able to later show they did not acquiesce in it.

  2. 4

    Hopefully, Dennis, you begin to see the game being played by the likes of Paul Morgan and the other champions of PTO reexaminations and IPRs. It really has nothing to do with “low cost” “alternatives” to litigation. It has to do with

    1. BRI
    2. Preponderance
    3. Intervening rights
    4. A decision made by political institution who members need jobs after they leave office.

    1. 4.1

      Ned, the only “game being played” is to deny the reality of IPR existence and its widespread effective use by law suit defendants, and to constantly insist that it is all going to go away by the Supreme’s declaring that what Congress passed in the AIA to be unconstitutional. Since it exists, it is highly appropriate to point out its advantages and disadvantages.
      I cannot believe that anyone would actually risk counseling a client having very good prior art available, yet being sued, to not ever use an IPR as part of a defense by assuring the client that IPRs are going to be declared unconstitutional? Surely even you must realize that is an extreme long shot.

      1. 4.1.1

        How is that “a game,” Mr. Morgan?

        I notice that you are quick to judge but notably lacking in backing up that judgment with ANY type of substantive response.

        It is quite the straw man to argue that the path does not exist today (you are the only one to have ventured forth that quaint idea). It is also quite disingenuous to make the unsubstantiated view of what is and what is not “pretending,” to do so repeatedly, and to not bother EVER to back up your statements.

        Wake up son.


          Great rant, “anon.” Next time can you try one that is at least marginally coherent?

          As Paul points out, IPR’s aren’t going anywhere anytime soon. And that’s a great thing because they are one of the few aspects of our patent system that actually seem to work.

          Of course, they’re still a total rip-off and they cost way too much. But they do seem to work. Buh-bye junk patents! “anon” salutes you.

      2. 4.1.2

        Paul, there is nothing wrong with an IPR so long as both parties actively agree to it.

        Its being widely used and effective (but for accused infringers only) is acknowledged.

        That it is effective and widely used for benefit of accused infringers may influence a patent-hostile congress, hostile because of the grand scale of the lobbying effort put on by big corp, sans Pharma, but your assumption that this automatically decides a constitutional issue is somewhat puzzling. You seem to assume that the Federal Circuit will ignore the constitution and the controlling Supreme Court authority, and that they will continue to do so until someone petitions the Supreme Court to force them into compliance.

        Now that, sir, is an extremely cynical view. It also appears that you have a very, very low opinion of the current membership of the Federal Circuit.

        I will note, you never address the controlling authority in any of these conversations. Neither did the government in its oral argument with the exception of relying on Stern (rights created as part of a regulatory program) and couple of other cases that are easily distinguished. However, with respect to it principal argument that a right created by statute that affects the public is automatically a public right — there is no support at all anywhere in the Supreme Court case law for this proposition.

        In contrast, the Supreme Court has repeatedly made clear that rights created by statute (outside a regulatory program that congress has the power to enact) are property, and their validity must be tried in court and to a jury if requested. Patents have long been considered just such a right — property. Even Patlex held that they were property.

        The government position is singular in that it is entirely without support in the case law.


          used and effective (but for accused infringers only) is acknowledged.

          Do you think your pal Malcolm agrees?


            My (objectively neutral) reply is being edited out, and even a note that my reply has been edited out is being edited out.

            Sorry Paul, one way editing cannot lead to dialogue.


          the Supreme Court has repeatedly made clear that rights created by statute (outside a regulatory program that congress has the power to enact) are property

          I would seem pretty clear to most people, I think, that the patent system is a quintessential example of a regulatory program that Congress had the power to enact.

          Now, you could easily argue that the granting patents isn’t really regulated anymore because for the last twenty years it’s more a less been an unregulated give-away to anyone wealthy enough to gamble on some computer implemented junk. But that argument probably won’t work either.


            MM, you are arguing that patents are issued from the power granted congress in the commerce clause.


              He is not arguing that at all Ned – all that he is attempting to “argue” is that patents are not property.

              That is is the sum total of what he is “arguing.”

              To get at that end, he offers no real “means” under the law, and BOTH ig nores ALL of your positions here and in the real court, as well as the direct words of Congress in 35 USC 261.

              Good luck in getting him to respond with anything cognitive and on point.

    2. 4.2

      It really has nothing to do with “low cost” “alternatives” to litigation. It has to do with

      1. BRI
      2. Preponderance

      This script is getting really tired. As the CAFC has recognized, “BRI” — when properly carried out — is nothing more than a logical tool for evaluating the legal scope of a patent’s claims versus the applicant’s belief about the scope of those claims. What’s the alternative? You want the PTO to use the “narrowest reasonable alternative” when examining claims? That’s never going to happen. Give it up already.

      And the preponderance standard is the proper standard for review of patent of dubious validity that shouldn’t have been issued by the PTO because it didn’t have all the facts in front of it.

      As for intervening rights, those too are never going to go away. Just get used to them. It’s part of a sane and fair patent system. Applicants need to learn how to draft decent claims and the b0ttom-feeding attorneys who will do and say anything to protect ineligible junk need to get a life already.

      And what’s missing from the picture that would make things even better? At a minimum, the following: (1) serious and painful sanctions that really hurt the applicants and attorneys who routinely make disengenuous arguments in desperate attempts to obtain junk claims and (2) limits on the number of patent claims that can be pursued or owned by a single entity.

      1. 4.2.2

        MM, the Supreme Court has repeated ruled that clear and convincing evidence is required to find an issue patent invalid.

        BRI is a tool of examination, not a tool of claim construction of an issued patent.


          the Supreme Court has repeated ruled that clear and convincing evidence is required to find an issue patent invalid.

          That’s why we initially put extra burdens on those who seek to have the PTO re-examine issued patents.


            MM, in practice, there really is no barrier other than that the office has considered the issue before.


              there really is no barrier other than that the office has considered the issue before.

              That’s a substantial barrier when the Office has done a thorough job prior to granting the patent in the first place.

              It’s difficult to understand why more subsantial barriers would be necessary or desirable when, in fact, (1) the Office hasn’t done it’s job and (2) that fact has been demonstrated by evidence and reasonable argument.


            the bundle of property rights of a granted patent.

            The “bundle” doesn’t include “freedom from re-examination”.

            It’s long been observed that the “pro-patent” types who scurry about the Internet and screech about the “Royal Nine” and the Constitootion are pretty much indistinguishable from the typical US gun nut when it comes to their understanding of their precious “rights”.

            Unfortunately, unlike the typical gun nut, the unbridled patent luvvers are of little use to anybody, politically or intellectually.

            But keep trying! If nothing else, you bring the laughs.


              Wow – nice dive into the bushes.

              You want to come back and make an actual legal point in your reply? Here, you have said your usual absolutely nothing but ad hominem.

              Prof. Crouch must be soooo proud of you.


              But to add (an actual legal point), that bundle of property rights in a granted patent does in fact include the presumption of validity – and that is a C&C presumption.

              At institution – and distinctly separate from any final adjudication on the merits – that stick is taken without recompense and without any Article III review by an Article I executive agency.

              Maybe you want to bone up on actual law instead of quick dive into your trite and over-worn short script of ad hominem and come up with a cogent legal reply.

              I won’t be holding my breath.

  3. 3

    How is a manifest different if it is for the currently transporting vehicle or for another transporting vehicle?

    I imagine the vehicle ID is different, but is there another difference?

    1. 3.2

      This patent is ineligible junk.

      Use old technology to collect data, then send the data to someone who”utilizes” the data to prepare a document. That’s ineligible junk and it doesn’t become eligible because you limit it to some silly shipping context.

      My car comprises a list of instructions for my friend’s grandma to follow when she replaces her stove. Can I haz patent now? Of course not.

      What a joke of patent system.


          So sayith MM, and so it is so

          Indeed. What’s important to recognize is that “it is so” not because “MM says it” but because any other result leads to a patent system swamped with endless reams of ludicrous sludge filed by attorneys who couldn’t innovate themselves out of a paper bag.

      1. 3.2.2

        What about this is junk? Please explain.

        1. A method for transferring shipping documentation data for a package from a transporting vehicle to a remote processing center:

        placing a package on the transporting vehicle;

        using a portable document scanner to scan an image of the documentation data for the package, said image including shipping details of the package;

        providing a portable image processor capable of wirelessly transferring the image from the transporting vehicle;

        wirelessly sending the image to a remote processing center;

        receiving the image at said remote processing center; and

        prior to the package being removed from the transporting vehicle, utilizing said documentation data at said remote processing center to prepare a loading manifest which includes said package for further transport of the package on another transporting vehicle.

    2. 3.3

      Les, my only point is that the whole reexamination scheme is biased against the patent owner. It is rigged. Even if this was not the original intent, the PTO and subsequent Federal Circuit decisions made it so by employing BRI and preponderance.

      People advising clients in litigation are quick to point this out. They are further quick to point out intervening rights.

      It is a sick game, Les.

      1. 3.3.1

        The solution to the “intervening rights” “problem” is to remember to include a range of claims when you prepare and prosecute your patent application.


          MM, utterly true.

          True story, and the case is still pending.

          Claims 1-10, 2-10 dependent on 1. X is accused of infringement of 1 and 10. Reexamination. Claim 10 confirmed. 1 Rejected. Claims 11-20 added, identical to 1-10 with a small change to 11. Claim 10 and 11-20 determined patentable/confirmed. In court, amended infringement contentions to drop 1, but to include 11 and 20. Court says 10 and 20 are the same scope, pick 1. We choose 20 to simply the case. Later, on motion to a new judge just before trial, court holds that 1 and 20 are changed in scope — no intervening rights.

          Now, is this even remotely fair?


            Ned –
            I had and made not argument with your post at 4.0. Your post in here is under 3.x. I agree with you at 4.0. The system is biased against inventors from the get go in any system where an examiner is the opposing council, judge, jury and executioner.


              The system is biased against inventors from the get go in any system where an examiner is the opposing council, judge, jury and executioner.

              It’s so biased, in fact, that more junky claims have been handed out to patentees in the past twenty years than ever before in the history of the patent system!

              LOL. Some “bias.”


                ^^^ from the guy who wants to rewrite history and say that the Reject-Reject-Reject era never happened…

                Funny how facts keep on getting in the way of Malcolm’s “views.”


            Court says 10 and 20 are the same scope, pick 1. We choose 20 to simply the case.

            It’s impossible to evaluate any “unfairness” here without more details but if you wanted to keep things “simple” wouldn’t it better to pick the originally granted and unamended claim 10 rather than the amended claim that was added during re-exam?


              In hindsight, absolutely. But the court required us to choose because they were of the same scope.

              Get it?


                the court required us to choose because they were of the same scope. Get it?

                I get that the second judge didn’t buy into the first judge’s view of the claims (and I have no opinion on the first judge’s view of the claims).

                My point is just that, all other things being equal (including the claim scope) the “simplest” claim would be the claim with the simplest prosecution history. That’s not a retrospective analysis.

  4. 2

    Here is a case on point to also be dealt with: In Marine Polymer Technologies Inc. v. HemCon Inc., No. 2010-1548, 2011 U.S. App., 100 U.S.PQ.2d (BNA) 1257 (Fed. Cir. Sept. 26, 2011) (Dyk, J.), a case of first impression, the Federal Circuit concluded that intervening rights arose during reexamination even though infringed claims of the original patent were word-for-word identical with those in the reissue patent.

    1. 2.2

      Paul, you are citing a case vacated by this one: Marine Polymer Technologies, Inc. v. HemCon, Inc., 672 F.3d 1350 (Fed. Cir. 2012).

      1. 2.2.1

        Thanks Ned and anon, I had the panel decision handy in notes but not that highly split en banc reversal. That makes it even more on point as to the extent to which claims may or may not differ in amended [or admitted] scope after any post-grant proceeding to trigger intervening rights or not.

  5. 1

    The root of the problem is the fruit (vegetable?) of the plastic carrot offered to change the traditional and full strength of the Quid Pro Quo in order to obtain the Quo with pre-grant publication for the “plastic” quid of such fragile rights.

    This is not to say that this is new or unknown. It is to say “gotcha.”

    A different flavor of patent profanity.

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