Judge Marra Finds that Examiner’s “Clarifying” Amendment Triggers Intervening Rights

Scott Daniels | March 29, 2012

This past Tuesday Judge Kenneth Marra of the Southern District of Florida granted summary judgment in Cobra International v. BCNY International (2012 U.S. Dist. LEXIS 42140) that the accused infringer was entitled to absolute intervening rights.  Because of an amendment made to the claims in reexamination, damages for any act of infringement that occurred prior to the reexamination certificate are eliminated. 

Of interest to reexamination practitioners is the twist that the amendment in question grew out of an interview with the examiner and was characterized by the examiner as “clarifying.”  The patent was for a “lighted shoe” including a series of LEDs and other electrical components.  The patent successfully emerged from reexamination twice; at the end of the second reexamination the examiner stated:

“Discussed … clarifying the language of the claims to avoid the prior art of record and put case in condition for allowable. Exr. and Att. agreed upon changed. See the attached examiner’s amendment.”

(Emphasis added).  The examiner’s amendment added the requirement that the connection between a clock input terminal and an OR gate output terminal be “logically directed.” 

The accused infringer asserted in its motion for summary judgment that the amendment had changed the substantive scope of the claims, thereby creating absolute intervening rights.  The patentee countered that the amendment was merely “clarifying,” as attested by the examiner’s own remarks. 

Judge Marra was not convinced by the patentee’s argument.  He found that “the addition of the language ‘logically directly’ to Claim 9 narrows the scope of the ‘858 Patent.”  Thus, before “the Second Reexamination, a clock input terminal that was not ‘logically directly’ connected to an OR gate output terminal would have been included within the scope of Claim 9. The addition of the term ‘logically directly’ imposes a new limitation on the type of connection referenced in Claim 9.” 

The fact that the examiner referred to the amendment as “clarifying” was of no significance, given content of the amendment itself.  The Judge also pointed to the context of the amendment, specifically, the fact that the examiner had included the words “logically directed” in his recitation of the claim wording that was the basis for his allowing the claims. 

Reexamination lawyers will continue to use the word “clarifying” to describe their amendments, but should expect a critical eye from the bench.

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