Intervening Rights : US PTO Litigation Alert™

Accused Infringer Wins Absolute Intervening Rights but not Equitable Intervening Rights

Scott Daniels | January 29, 2014

Ex parte reexamination and inter partes review offer an accused infringer a number of benefits, even where the patent survives its trial at the Patent Office.  Most notable among those benefits is the possibility of the accused infringer obtaining intervening rights based on amendment of the claims during reexamination or review.  Such rights are created by 35 U.S.C. § 307(b) which reads:

Any proposed amended or new claim determined to be patentable and incorporated into a patent following a reexamination proceeding will have the same effect as that specified in section 252 of this title for reissued patents on the right of any person who made, purchased, or used within the United States, or imported into the United States, anything patented by such proposed amended or new claim, or who made substantial preparation for the same, prior to issuance of a certificate under the provisions of subsection (a) of this section.
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Apple will not Face Trial on MobileMedia Claims Amended in Reexamination

Scott Daniels | November 19, 2012

MobileMedia Ideas’ infringement action against Apple was pared back a bit this week, when Judge Sue Robinson ruled that she would not permit certain claims of U.S. Patent No. 6,427,078 to go to trial.  The ‘078 patent – that claims a camera-cell phone with “a means for transmitting image information processed by said processing unit to another location using a radio frequency channel” – emerged from reexamination in September.  The Patent Office determined that the claims were valid over the prior art, but only after MobileMedia had made a substantial number of changes to claim 1 and therefore to claims 2 and 3 that depend on claim 1.

Citing these amendments, Apple asserted that it would be unfair for MobileMedia to assert claims 1-3 of the ‘078 patent at trial, and moved to exclude them.  Judge Robinson granted Apple’s motion.

The Judge began her analysis by analogizing Apple’s “fairness” issue to an assertion of intervening rights where the patentee has amended its claims in reexamination or reissue.

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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:

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CAFC Marine Polymer Decision Changes Law of Intervening Rights, Again

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.

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Judge Koeltl Grants Summary Judgment of Intervening Rights

Scott Daniels | March 6, 2012

The patent infringement case brought by Dey and Mylan against Sepracor (now Sunovian) came to an abrupt end last week when Judge John Koeltl of the Southern District of New York granted two summary judgments in favor of the accused infringer.  Sepracor was accused of infringing two families of patents – the claims were for compositions and methods for treating certain pulmonary diseases with the drug formoterol.  First, Judge Koeltl granted summary judgment that the claims of one family of patents were invalid because of an anticipatory public use.  What will interest reexamination practitioners, however, is the Judge’s grant of summary judgment that the accused infringers are entitled to intervening rights with respect to the second family of patents.

After commencement of the infringement action, Sepracor requested reexamination of the patents in the second family.  Reexamination was granted, the claims rejected, but then confirmed in light of the patentees’ arguments and the following representative claim amendment:

A pharmaceutical composition, comprising formoterol, or a derivative thereof, in a pharmacologically suitable fluid [aqueous solution], wherein the composition is stable during long term storage, the fluid comprises water, and the composition is formulated at a concentration [effective for bronchodilation by nebulization, and the composition is] suitable for direct administration to a subject in need thereof [without propellant and without dilution of the composition prior to administration].

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Will the Marine Polymer Expansion of Intervening Rights be Reversed?

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. 

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Sorenson ‘184 Patent Claims might be subject to Intervening Rights

Scott Daniels | December 28, 2011

Over the years, Jens Erik Sorenson has sued so many companies for infringement of his cyclic injection molding patent, U.S. Patent No. 4,935,184, that it might be the most well-known patent of the 20th Century.  Although it expired several years ago, a number of infringement actions continue, including the consolidated case Sorenson v. Emerson Electric et al., 08-cv-60 (S.D. Cal.). 

 There, Defendants Emerson, Ryobi and Rally Mfg. recently moved for summary judgment that they were entitled to absolute intervening rights because of arguments made by Sorenson in reexamination, effectively amending the claims.  Judge Barry Ted Moskowitz has initially denied the intervening rights motion, but he also states that he will reconsider it once he has conducted a Markman claim construction hearing at the end of February.

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Medtronic’s New Intervening Rights Assertion Falls Short, for Now

Scott Daniels | December 19, 2011

The recent split panel decision of the CAFC in Marine Polymer – holding that a patentee’s argument in reexamination “effectively narrowing” the scope of a claim could create absolute statutory intervening rights erasing damages for acts occurring before the issue date of the reexamination certificate – has caused a stir in the patent world.  An argument made by the accused infringer Medtronic in Voda v. Medtronic (Case No. 09-cv-95), and not expressly rejected by the trial court, would extend the sweep of intervening rights even further.

Voda’s patent claimed a method for extending a catheter through the aorta, including the step of “advancing the catheter body distal end through the aortic arch.”  In an earlier law suit, won handsomely by Voda, its expert witness testified regarding this limitation, perhaps implying that the limitation should be construed broadly, i.e., that Voda’s claims would encompass not only procedures of a so-called “femoral approach,” but also procedures using “a radial approach.”  Voda later sued Medtronic in the present case, and Medtronic replied, inter alia, by filing requests for reexamination four times.  The result of those reexaminations was the PTO’s confirmation of the validity of all relevant claims.  Specifically, the examiner confirmed the claims because of “clarification that advancement of the catheter through the aorta included the entire aortic arch,” i.e., construing the claims to cover only procedures with the “femoral approach.” 

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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.

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Marine Polymer and Section 112 Rejections in Reexamination

Scott Daniels | October 27, 2011

The CAFC’s decision last month in Marine Polymer – granting intervening rights where the patentee “effectively amends” its claims by narrowing argument in reexamination – is expected to have a major impact on infringement litigation.  What might not be expected, however, is the impact that Marine Polymer could have on reexamination.

A cardinal principle of reexamination practice is that the only possible rejections are prior art rejections based on patents or printed publications.  The patentee opens the door to Section 112 rejections only when it amends its claims or adds new claims – and even then, the Section 112 rejections are limited to the claim limitations amended and the new claims.  That measure of comfort enjoyed by the patentee might be lost if the PTO follows the holding of the Board’s decision issued today in Nissim v Time Warner, 95/000,312  There, the panel determined that the rationale of “amendment in effect” from Marine Polymer calls for Section 112 review of claim limitations that effectively narrowed in scope by argument.

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