Intervening Rights Absolve GE of Damages for Activities before Reexamination Certificate Issue Date

Darrin Auito | November 11, 2010


Judge Norman K. Moon of the Western District of Virginia has held in University of Virginia Patent Foundation v. General Electric Company, et al., that pursuant to 35 U.S.C. §252, GE has “intervening rights” and cannot be held liable for any infringement of Claim 1 of U.S. Pat. No. 5,245,282 (“282 patent”) prior to issuance of the reexamination certificate.

In other words, GE gets a pass for the near 17-year period between issuance of the original ‘282 patent and its conversion through reexamination to a valid patent.

This pass is typically given when the claims at issue have been amended (more than insubstantially) or added during an ex parte reexamination request.  35 U.S.C. §307 and 35 U.S.C. §252.

However, in this case, the claim at issue (Claim 1) was not amended (or added) during the reexamination proceeding.  The only thing that appears to have changed is the scope of Claim 1.

§307(b) governs the effect of a reexamined patent on alleged infringers during the period prior to issuance of the reexamination certificate and triggers §252.  Judge Moon decided that this statute applies in this case because Claim 1 was “amended in effect” as a result of the cancellation of Claim 4, which altered the scope of Claim 1.

Amended in effect?  Interestingly, this type of amendment is not recited in §307(b), which states:

Any proposed amended or new claim determined to be patentable and incorporated into a patent following a reexamination proceeding will have the same effect as that specified in section 252 of this title for reissued patents on the right of any person who made, purchased, or used within the United States, or imported into the United States, anything patented by such proposed amended or new claim, or who made substantial preparation for the same, prior to issuance of a certificate under the provisions of subsection (a) of this section.

Judge Moon recognizes this point, but states that “the Court will not permit the Patent Foundation to avoid application of §252 through §307(b) by taking advantage of the imperfect drafting of Claim 1 to change the meaning of Claim 1 indirectly, rather than through formal amendment.”

Therefore, according to Judge Moon, Claim 1 has the same effect as a reissued patent under §252, which states:

The surrender of the original patent shall take effect upon the issue of the reissued patent, and every reissued patent shall have the same effect and operation in law, on the trial of actions for causes thereafter arising, as if the same had been originally granted in such amended form, but in so far as the claims of the original and reissued patents are substantially identical, such surrender shall not affect any action then pending nor abate any cause of action then existing, and the reissued patent, to the extent that its claims are substantially identical with the original patent, shall constitute a continuation thereof and shall effect continuously from the date of the original patent.

In other words, a cause of action for infringement of a patent during the period before the date of the issuance of the reexamined patent survives only if the claims of the original and reexamined patents are “substantially identical.”

In this case, the language of the original and reexamined Claim 1 is identical and it is only the scope of the claim that has changed.

According to §252, there are no intervening rights when the claims are substantially identical.  This appears to be the case here because the claim language is actually identical.

Also, each of the cases that Judge Moon relied upon in his opinion actually involved situations in which the claim language was amended during reexamination.

Given the above scenario, can the Court justify granting intervening rights to GE?

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