Card Activation Case: A Correction

Scott Daniels | September 28, 2010

Yesterday we posted a story about the reexamination of a patent owned by Card Activation and the effects that the reexamination might have on a parallel law suit.  We commented the amendment of two independent claims to recite the subject of two dependent claims “would preclude Card Activation from recovering damages accrued for infringement prior to last week’s reexamination certificate issue,” citing 35 U.S.C. § 307(b).  One of our subscribers subsequently pointed out that the comment misstated the law.

The general rule under § 307(b) is that an amendment of a claim in reexamination that “substantively changes” the scope of the claim extinguishes damages for acts of infringement that occurred before the date of the reexamination certificate.  Laitram Corp. v. NEC Corp., 163 F.3d 1342, 1346, 49 USPQ2d 1199 (Fed. Cir. 1998).  On the other hand, an amendment of an independent claim that merely incorporates the subject matter of a dependent claim is not treated as “substantive.”  Bloom Engineering Co., Inc. v. North American Mfg. Co., Inc., 129 F.3d 1247, 1250, 44 USPQ2d 1859, 1861 (Fed. Cir. 1997).

We will leave to the courts the question of how these legal principles apply to the reexamined claims of the Card Activation patent.  We do plan, however, to post a study on claim amendments in reexamination and the effect of those amendments on subsequent litigation.

We apologize for our error and thank our subscriber.

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