Claim Amendments in Reexamination Eliminate Patentee’s Right to Past Damages

Scott Daniels | January 18, 2011


A major challenge facing patentees in reexamination is the dilemma that they may need to amend a claim to distinguish it over the cited prior art, and yet such a change in the scope of the claim eliminates the possibility of the patentee’s recovering damages for the entire period preceding conclusion of the reexamination.  An infringer is entitled to such an “intervening right” even where the accused product falls within the scope of both the originally issued claim and the amended claim. In some cases, the length of time between the claim amendment and the end of the reexamination affords the patentee ample time in which to design around the amended claim, or perhaps the market simply moves on to a different technology. 

This tension between what needs to be done at the PTO and the adverse consequences in a later court case was clearly in evidence last week. 

In Antonious v. Roger Cleveland Golf Company, Judge Cormac Carney of the Central District of California granted summary judgment that the patentee could not recover for any acts of infringement occurring before the January 5, 2010 issue date of the reexamination certificate for the patent-in-suit. [1]  Judge Carney found that the key claim had been amended in two respects during reexamination of the patent, so that the claim was not “identical” to any of the claims of the patent as originally issued.  The patentee acknowledged the amendments, but argued that the scope of the claims had not actually changed.  The Judge disagreed, noting that the patentee had cited the amendments as a basis for traversing a prior art rejection and that the examiner had appeared to rely upon the amendments when he withdrew the rejection.

This prospect of loss of right from amendment of claims is clearly on the minds of patentees in reexamination, as they attempt to overcome prior art rejections through argument rather than claim amendment.  In an example just today, the patentee in Ex parte Frise argued that its claim for a telephone call waiting apparatus was patentably distinguishable over the prior art in two respects.  The PTO Board disagreed, finding that the distinctions relied upon by the patentee simply did not appear in the claims, that the patentee’s argument “requires impermissible rewriting of the limitation[s].”  “We conclude that [patentee’s] arguments that the claims should be given a different interpretation than is evident on their face are not an adequate substitute for actually amending the claims to so limit them.”  In this case at least, the Board was not cutting the patentee any slack.

[1] The patent claimed an aerodynamic metal wood golf club head.  The named inventor was Mr. Anthony Antonious, perhaps the best known inventor in golf, and certainly a widely liked gentleman.

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