Scott Daniels | January 30, 2012
A few days ago the CAFC issued a notice that it would review, en banc, last September’s 2-1 panel decision in Marine Polymer v. HemCon, specifically the holding that absolute intervening rights arise where a patentee narrowly construes its claims in reexamination, thereby “effectively amending” those claims, even without an actual amendment of the claims. See 35 U.S.C. §§ 252 and 307(b). Such intervening rights, of course, eliminate all damages for the period before the issuance of the reexamination certificate concluding the reexamination. Until Marine Polymer, only a single trial had found intervening rights derived from argument alone.
There was, however, a dissent by Judge Alan Lourie who did not accept the “amendment in effect” argument. For him, there is “threshold requirement in §§ 307(b) and 316(b) that intervening rights apply only to amended or new claims.” Since that threshold requirement was not satisfied, there could be no intervening rights, Judge Lourie argued.
Most members of the reexamination bar seem to agree with Judge Lourie’s view that mere argument, without an actual amendment of the claims, is not enough to trigger intervening rights under the statute. In fact, one could imagine reexamination practitioners across the country nervously doing a mental inventory of the cases in which they had traversed rejections in reexamination, wondering whether they might have inadvertently created intervening rights by doing so.
The CAFC’s en banc notice should calm their worry. The starkness of the notice – the CAFC identified no specific issues to be addressed and forbid any further briefing – surely indicates that the Court intends to reverse the panel decision and to adopt Judge Lourie’s dissent, that the statute requires an actual change of the claims. Why grant en banc review without further argument unless the full Court has already determined that Judge Lourie was right? I expect a decision soon.