Post Grant: Narrowing Claim Construction Argument Creates Intervening Rights for Accused Infringers

by Dennis Crouch

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

It seems that most accused infringers with a credible argument on prior art also file for reexamination or else the patentee preempts with a reissue application. These cases create parallel processes ongoing in both the district court and USPTO with both bodies making interim determinations about claim scope and, ultimately, patent validity. The balance of power and respect between the USPTO and the courts continues to be in flux, and that flux will most certainly continue as the USPTO implements the changes to the post grant system mandated by the Leahy-Smith reforms.

In this case, the Federal Circuit has held that a narrowing claim construction argument made by the patentee in a reexamination gives rise to absolute intervening rights for accused infringer’s products made or sold prior to the reexamination request. The key importance is that this decision is that the reexamination is was still ongoing at the time of this Federal Circuit decision.

Although we have not directly addressed whether arguments made to the PTO during reexamination can amend the scope of claims for purposes of the intervening rights doctrine, we have consistently held that arguments made to the PTO on reexamination can create an estoppel or disavowal and thereby change the scope of claims even when the language of the claims did not change. . . .

We see no reason why this rule, giving effect to disclaimer of claim scope during reexamination or reissue, should not also apply in the context of intervening rights. In fact, a contrary rule would allow patentees to abuse the reexamination process by changing claims through argument rather than changing the language of the claims to preserve otherwise invalid claims and, at the same time, avoid creating intervening rights as to those claims. Therefore, if the scope of the claims actually and substantively changed because of Marine Polymer’s arguments to the PTO, the claims have been amended by disavowal or estoppel, and intervening rights apply. This is so even though Marine Polymer did not amend the language of its claims on reexamination.

An additional twist here is that the “narrow” claim construction argued by the patentee was simply the construction decided by the by the district court. On appeal, however, the Federal Circuit held that the construction was erroneously narrow and that, therefore, the patentee’s argument was also a narrowing argument.

The majority opinion was written by Judge Dyk who was joined by Judge Gajarsa. Judge Lourie filed a dissent — arguing, inter alia, that by statute, intervening rights only apply to “amended or new claims.” See 35 U.S.C. 307(b) and 316(b).

Posted on Sep 26, 2011

http://www.patentlyo.com/patent/