Sara Lee’s Intervening Rights Affirmed

Scott Daniels | December 12, 2011

Last year Judge Susan Cox in Yoon Ja Kim v. The Earthgrains Company (aka Sara Lee) Intervening Rights Order, 2010 WL 62520, at *4-*5 granted summary judgment that the accused infringer, Sara Lee, was entitled to intervening rights under 35 U.S.C. §§ 252 & 307(b).  Judge Cox found that the patentee had “substantively changed the scope” of its claims in reexamination when it replaced the transition phrase “consisting essentially of” with “consisting of.”  The claim scope was also narrowed when the limitation “food acid” was changed to those food acids that are “present in an effective amount that slows down oxidation of ascorbic acid to dehydroascorbic acid during a manufacturing process of yeast-leavened products.”  The Judge therefore concluded that the patentee was not entitled to damages for any acts of alleged infringement occurring before the issue date of the reexamination certificate.

 On Friday the CAFC affirmed the summary judgment in favor of Sara Lee.  A patentee of a reexamined patent is entitled to infringement damages for the period between the date of issuance of the original claims and the date of issuance of the reexamined claims only if the reexamined claims are “identical” to, i.e., “without substantive change” from, the original claims.  If the patentee makes substantive changes to the original claims, the patentee is entitled to infringement damages only for the period following the issuance of the reexamination certificate.  It is not relevant whether the claims were narrowed or broadened or whether the accused product is covered by the new claims.

The patentee argued that the scope of the claims did not change when she replaced the “consisting essentially of” with “consisting of” because the claims still cover the same inventive subject matter.  The CAFC disagreed, explaining that “consisting essentially of” claim is generally broader than a “consisting of.”  The CAFC asked: “Why, if the claims are of identical scope, did she amend them?”  The CAFC offered its own explanation from the reexamination record – the patentee deleted the word “essentially” to obtain allowance in response to the PTO’s rejection of the “consisting essentially of” claims as unpatentable over the prior art.  The CAFC also noted the amendment the “food acid” limitation as separate basis for infringing intervening rights.

The case demonstrates one of the principal hazards for patentees in reexamination.

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