Background on intervening rights
Since the 1940’s, the courts recognized the inherent unfairness of changing the claim scope of an issued patent through post issuance procedures and then suing another who had relied on the issued claims in the original patent in preparing to compete. For example, if a patent was directed to an automobile having four wheel but later amended to a car having three wheels, then the court would not penalize a third party that built or prepared to build the three wheel car during the time period that the patentee and the Patent Office fixed any defects in the patent. This is known as intervening rights. The patent is supposed to serve a public notice function and competitors are allowed to rely on the notice that the originally issued patent provided in deciding what is and isn’t protected by the patent so that they can design around the issued patent, if possible.
Marine Polymer v. Hemcon history
Marine Polymer v. Hemcon was recently decided by a partial panel of the Federal Circuit regarding intervening rights. The Federal Circuit previously held that any change to the claims, whether it was made express in the language of the claims or implied through arguments made during reexamination of the patent, was sufficient to give rise to intervening rights to the defendant. The Federal Circuit decided to review the case again en banc, meaning that all judges at the Federal Circuit reviewed the decision of the partial panel.
The en banc decision of the Federal Circuit is straight forward. They looked to the language of the statute providing for intervening rights during reexamination and held that intervening rights arise only for “amended and new” claims as recited in the statute. The opinion construed “amended” as limited to express changes in the claims but not including any changes to the scope of the claims that might have been made through arguments. Since the claims at issue in Marine Polymer were never expressly amended and were not newly added, the en banc decision held that no intervening rights arose even though scope of the claims or the meanings of the terms in the claims had changed during reexamination.
Claims can change scope by expressly amending a claim such as from “four” to “three”. Alternatively, in certain instances, the scope of claims can be altered by argument. For example, if you argue that X is not included in a term, then the courts will hold you to your statement. It is a bit more difficult to argue that four should be construed as meaning three but it would be easier to say that “biocompatibility” could be construed as “no reaction” even though the specification of the patent contemplated that biocompatibility may include “a small amount of reaction”. This was the case in Marine Polymer.
In Marine Polymer, the patent at issue was reexamined and rejected. The patentee argued that biocompatibility should be construed as meaning “no reaction” in order to get around a prior art reference even though the claims had to be construed as including a small amount of reaction due to common claim construction principles. The examiner was convinced by the patentee’s argument and the patent successfully came out of reexamination without any formal express changes to the claims.
The en banc panel of the Federal Circuit was split equally on the issue of whether intervening rights arose when reexamination did not result in a formal express amendment to the claims but did result in a substantive change in claim scope. The dissent argued that the majority ignored the legislative intent of the intervening rights statute for reexaminations and used a mechanical approach to interpret the statute.
Tips during reexamination
At one level, this case provides straightforward rules and tips for intervening rights for reexamination proceedings. In reexamination, do not make express claim amendments. Argue, argue and argue some more until you can convince the examiner that he/she should adopt the meaning of the term as you define it to avoid prior art.
Reexamination or reissue
On a different level, the same rules for reexamination as held in this case do not apply to reissue procedures. 35 USC 252 which governs the effects of a reissue patent does not have the operative “amended or new” language that 35 USC 307 specifies for reexamination. For reissue patents, if you make a substantive change whether it is expressed or not and whether or not it was made purely by arguments, intervening rights will attach for the defendant. As such, it is more important than ever to consider the pros and cons of filing a reissue or a reexamination, at least to the extent that you might have the choice.
I invite you to contact me with your patent questions at (949) 433-0900 or James@OCPatentLawyer.com. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.