Scott Daniels | March 20, 2012
Last September a divided panel of the CAFC ruled in the Marine Polymer case that intervening rights could be triggered in reexamination, not only by the patentee’s actual amendment of claims, but also by the patentee’s arguments that “effectively amend” the claims. Although the Marine Polymer decision did not reverse any previously controlling CAFC precedent, it did confound the patent bar by upsetting a decades-long assumption that intervening rights could not be created without a substantive amendment of the claim text itself.
Last week the CAFC, now sitting en banc, reversed the panel decision, holding that intervening rights in reexamination do, in fact, require amendment of the claim text; they cannot arise from the patentee’s argument alone. The en banc decision, while a squeaker – the vote was 6 to 4 with Judges Moore and O’Malley not participating – was undoubtedly correct. The literal wording of the relevant statutory provisions (35 U.S.C. §§ 252, 307(a) & (b)) indicates that an amendment of the claim text is needed. Moreover, the CAFC’s adoption of “an intervening-rights-by-argument” regime could have resulted in an enormous forfeiture of patent rights, that forfeiture caused by the simple fact that for many years reexamination lawyers had been unaware of the legal effect of their arguments against prior art rejections. Such forfeiture should be based on clear statutory wording, not a new, judicially-created doctrine.
At the same time, there are certain unconvincing aspects to the majority opinion written by Judge Lourie, most notably his expectation that PTO examiners routinely require the patentee to amend its claims to conform to the scope of its arguments distinguishing the prior art: “[i]f in reexamination an examiner determines that particular claims are invalid and need amendment to be allowable, one would expect an examiner to require amendment rather than accept argument alone.” One certainly would. But expectation is not necessarily reality. The enormous body of case law on prosecution disclaimer – the legal interpretation of a claim to have a scope narrower than its literal wording because the patentee’s narrowing arguments against the prior art – demonstrates that for many examiners, there is no such practice of requiring amendment.
What will happen now? My expectation is that the en banc decision will remain the law. I doubt that the Supreme Court will take up the case, assuming it is asked to do so. And even if Judges Moore and O’Malley would favor the “intervening-rights-by-amendment” view, there still would not be a majority of judges willing to reverse last week’s decision.