THE NARROWED CLAIM CONUNDRUM
Generally, a potential infringer is in a
more favorable position when the claims
of a patent are narrower because narrower
claims present greater chances to
argue non-infringement or to design
around the patent. However, it is often the
case that even narrower claims will
encompass the marketed product.
Because reissue and reexamination proceedingsare typically initiated after market formation, the patent holder is in aunique position to craft claim limitationsthat directly read on the marketed products.
In so doing, the patent holder may
be able to add limitations that distinguish
the prior art while still covering the products
on the market.
A simple illustration may be useful.
Suppose a patent was issued with the following single claim: A chair comprising a
seat and a back rest. A client seeks your
advice regarding the launch of an entire
new line of chairs that will have a seat,
back rest, arm rests and four legs.
Although this line of chairs obviously
infringes the issued patent, you find prior
art disclosing a simple chair with a seat
and a back rest. As a result, you advise
your client that it may launch the new
product line because the issued patent
with the broad claim is invalid.
After your client begins to market its
new line of chairs, the patentee discovers
the prior art and submits the patent for
reexamination. During reexamination, the
patentee amends the broad claim so that it
reads as follows (assuming there is support
in the original specification): A chair comprisinga seat, a back rest, arm rests andfour legs. Because the prior art does not disclose arm rests and four legs, the PTO
finds the amended claim to be patentable

and issues a certificate of reexamination
with the revised claim language.
This is where the conundrum comes in
– your client is still infringing the narrowed
claim, but the narrowed claim is
now valid over the prior art. Although
your client will likely not be liable for any
past damages and may be given intervening rights to sell off its current inventory,your client is likely going to be liable for patent infringement for all products manufactured and sold after the reexamination certificate is issued. Thus, the
patent, which was not a problem to your
client originally because the broad claim
was invalid, may now pose a considerable
barrier to your client’s continued marketing
of its new line of chairs

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BY CHAD A. LANDMON OF
AXINN, VELTROP & HARKRIDER LLP