Archive for the ‘past damages’ Category

Federal Circuit Employs Phillips Claim Construction to Measure Claims Amended in Reexamination for Possible Intervening Rights

Monday, February 22nd, 2016

When patent owners sue an accused infringer for patent infringement, one way for the accused infringer to avoid liability is to show noninfringement of the patent claims.  But if the claims are extremely broad, the accused infringer may find it difficult to prove noninfringement and instead may have to rely on a showing of invalidity to avoid liability.  However, a showing of invalidity requires clear and convincing evidence, which is a high standard.  Enter post-grant proceedings, which provide the petitioner (or “requester,” when employing reexamination) a lower evidence standard for patent challenges.

Should the patent be subject to review under post-grant proceedings, the patent owner will likely want to avoid amendment if possible, because amendment that results in substantive changes to the claimed invention can trigger intervening rights, which may provide some reduction of infringement liability for the accused infringer should the claim be substantively narrowed in the post-grant proceeding.  Stakeholders want to know how to determine substantive amendment, triggering intervening rights.  For example, is substantive amendment to be measured by the claim construction standard typically used in the post-grant proceeding (currently “broadest reasonable interpretation,” but pending review by the Supreme Court in Cuozzo), or the claim construction standard used in district court (Phillips)?  The Federal Circuit recently addressed this question when considering amendments made in reexamination for using the Phillips standard in Convolve, Inc. v. Compaq Computer Corp. (Fed. Cir., 2014-1732, Feb. 10, 2016).

Convolve sued Compaq and others in 2000 for infringement of its U.S. Patent No. 6,314,473 relating to minimization of vibrations of a disk drive for quieter operation.  Convolve’s patent ultimately was reexamined and in 2008 certain words were added to the claims during the reexamination.  The court considered whether the amended claims were substantively identical to decide if intervening rights would apply:

“A patentee of a patent that survives reexamination is only entitled to infringement damages for the time period between the date of issuance of the original claims and the date of the reexamined claims if the original and the reexamined claims are ‘substantially identical.’” R & L Carriers, Inc. v. Qualcomm, Inc., [ ]. “[I]t is the scope of the claim that must be identical, not that identical words must be used.” Slimfold Mfg. Co., Inc. v. Kinkead Indus., Inc., [ ]. As a result, amendments made during reexamination do not necessarily compel a conclusion that the scope of the claims has been substantively changed. [ ] This is true even where the claims at issue were amended during reexamination after a rejection based on prior art. Laitram Corp. v. NEC Corp., [ ] Rather, “[t]o determine whether a claim change is substantive it is necessary to analyze the claims of the original and the reexamined patents in light of the particular facts, including the prior art, the prosecution history, other claims, and any other pertinent information.” Laitram[ ].

Accordingly, the Federal Circuit employed a Phillips standard when reviewing the claim amendments:

In determining the scope of the claims, we apply the traditional claim construction principles of Phillips v. AWH Corp.,[ ] (en banc), paying particular attention to the “examiner’s focus in allowing the claims” after amendment. R & L Carriers [ ]; see also Laitram Corp. v. NEC Corp., [ ] (When an amendment is made during the reexamination proceedings to overcome a prior art rejection, that is a “highly influential piece of prosecution history.”).

In one example, the original claims recited “acoustic noise,” but were amended in reexamination to “seek acoustic noise.”  The issue that the Federal Circuit considered is whether this narrowing was a substantive amendment for purposes of its intervening rights analysis.  It could have been deemed the amendment to have been a substantive change, because other types of motor noises could have been ruled out by the amendment, but instead the court considered:

  • the specification, which focused on the seek process and the noise it generates;
  • the claims, which relate “acoustic noise” to the seek time and seek process; and
  • the original prosecution history of the patent, where the patent owner argued that the reason for the amendment.

It concluded:

On their face, the original claims recite only “acoustic noise,” which could encompass any manner of acoustic noise, including that generated from the spindle. But when read in conjunction with the remaining claim limitations and in light of the specification and prosecution history, a person of ordinary skill in the art would understand the claims to be limited to seek acoustic noise.

Consequently, the Federal Circuit decided the claim amendments resulted in substantively identical claims before and after amendment, and therefore intervening rights do not apply:

In sum, we conclude that the addition of the term “seek” before “acoustic noise” did not alter the scope of the claim.  [] Here, the language of the claims, read in light of the specification and prosecution history, especially the applicant’s 2001 remarks and amendment, compel a conclusion that the claims as originally drafted were limited to seek acoustic noise despite the lack of an express recitation in the claims.

The Federal Circuit reversed the lower court’s grant of summary judgment of noninfringement based on the lower court’s determination that liability was precluded by intervening rights.

The Federal Circuit concluded that the claim scope prior to the amendment would have been interpreted to be the same as the scope after amendment using a Phillips construction based on the specification, claims, and prosecution history.  Had the court instead relied upon the broadest reasonable interpretation from reexamination as its gauge, the claims would presumably have been deemed substantively different and the district court summary judgment would have been affirmed.  Convolve allows patent owners an opportunity to avoid intervening rights when amended claims would obtain the same Phillips claim construction as the claims prior to amendment.

 

Preissuance Submission Final Rules Published July 17, 2012

Friday, July 20th, 2012

The Patent Office has published its final rules for preissuance submissions under the AIA. A copy of the final rules can be found here (2012-16710). I briefly summarized the rule requirements in a presentation that can be found here (Preissuance Submissions Final Rule July 17 2012).

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En Banc Decision in Marine Polymer v. HemCon: Amended or New Claims are Candidates for Possible Intervening Rights

Tuesday, March 20th, 2012

In my earlier post, I summarized the panel opinion in Marine Polymer Technologies, Inc. v. Hemcon, Inc.  On September 26, 2011, a panel of the Federal Circuit reversed the district court’s decision, concluding that HemCon had acquired intervening rights in the ‘245 patent based on actions taken in a reexamination proceeding.   That opinion was vacated and Marine Polymer’s petition for rehearing en banc was granted on January 20, 2012.  In a divided decision, the Federal Circuit en banc affirmed the judgment of the district court.

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Do You Want That Post-Grant Review Super-Sized? – Part III

Tuesday, November 22nd, 2011

This is the third post in a series of articles on PGR strategies.  In Part I, I made the point that while patents come in all shapes and sizes, post-grant reviews (PGRs) basically come in two sizes.  By statute, the PGR must complete in 1 to 1 ½ years.  Part II addressed some of the issues that the Petitioner faces during a PGR and when the Petitioner may benefit from a 6 month extension.  This post will provide some insight to the Patent Owner’s analysis of what to do if its patent is tested in a PGR.

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Marine Polymer Technologies v. HemCon, Inc. and Intervening Rights

Sunday, October 30th, 2011

Marine Polymer Technologies, Inc. v. HemCon, Inc. (Fed. Cir. 2011) is a widely reported case that raises some questions about the scope of the application of intervening rights.  It involves a matter where the literal language of a claim was not amended, yet absolute intervening rights were still found to apply to the accused infringer.  Marine Polymer owns U.S. Pat. No. 6,864,245 (the ’245 patent), which claims a polymer p-GlcNAc that accelerates hemostasis (the process which causes bleeding to stop) and is useful in trauma units for treating serious wounds.  Marine Polymer sued HemCon, alleging that HemCon infringed claims 6, 7, 10, 11, 12, 17, and 20 of the ’245 patent.  (more…)

New, More Popular Post-Grant Patent Challenges Drive Patent Generation Strategy

Saturday, September 24th, 2011

Patent Generation and Enforcement Before the Popularity of Post-Grant Proceedings

Patent Owners adopt different approaches for drafting patent applications.  For large companies a patent production line approach is frequently adopted which limits the cost and the commensurate drafting efforts on any particular application.  There is a reasonable argument to use this “assembly line” approach for very large portfolios.  But for smaller companies and/or for extremely strategic portfolios this approach may fail.  Why?  Because when the effort expended to establish patent rights is limited, the resulting patent applications can be hastily drafted, or just plain incomplete.  They can also fail to consider relevant prior art.  Such applications can turn into weak patents.  And weak patents in litigation or in reexamination may lose the day for the patent owner.

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Fractus SA Gets $23M Verdict Against Samsung in Antenna Patent Litigation

Wednesday, May 25th, 2011

In Fractus, S.A. v. Samsung Electronics Co., Ltd., et al. (6:09-CV-203, EDTX), a jury gave a verdict of patent infringement of four different patents owned by Fractus S.A. against Samsung to the  tune of $23,129,321 in damages.  The jury found that Fractus proved the infringement was willful by clear and convincing evidence.  The Verdict Form provides details as to the patents and the particular claims found to be infringed.  The infringed patents are:

  • U.S. Pat. No. 7,015,868 (see the nonfinal rejections of claims 26 and 35 in reexamination control no. 95/001,390 for example);
  • U.S. Pat. No. 7,123,208 (see the nonfinal rejections of claims 7 and 12 in reexamination control no. 95/001,389 for example);
  • U.S. Pat. No. 7,397,41 (see the nonfinal rejections of claims 14 and 30 in reexamination control no. 95/001,482 for example); and
  • U.S. Pat. No. 7,394,432 (see the nonfinal rejection of claim 6 in reexamination control no. 95/001,483).

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Federal Circuit Decision in In re Tanaka

Thursday, April 21st, 2011

You might recall that we discussed the BPAI decision in In re Yasuhito Tanaka in an earlier post.  On April 15, the Federal Circuit reversed the BPAI decision and remanded the matter for further proceedings in accordance with the opinion.  The Federal Circuit held  that a patent owner that retains original patent claims and adds new narrower claims in a reissue application does indeed present a type of error correctable by reissue under 35 U.S.C. § 251.   (more…)

“Past Damages” and Reexamination for Mature Patents

Monday, February 28th, 2011

An earlier post discussed the impact of amendments in reexamination, but there are some dynamics we should explore for “mature” patents.  A mature patent is an old patent that is close to expiration.  (For example, a patent that has less than 5 years of patent term before expiration.) 

When a patent is asserted late in its life, the patent can expire before a reexamination final decision is rendered.  That is because the patent reexamination and appeals can take more than 5 years in some cases.  If the litigation is “stayed” pending the outcome of the reexamination, then a court will use the outcome of the reexamination to simplify issues for the litigation.

Patent owners with a patent that expires during the reexamination really want at least one infringed claim to survive reexamination without substantive amendment to keep the possibility of past damages alive.  Future damages are not on the table, because the patent expired during the time the patent was in reexamination.

Potential infringers want just the opposite;  they want every claim to be substantively amended in the reexamination (or better yet, cancelled).  They don’t need to worry about future damages on an expired patent.

So for mature patent assertion situations, defendants want:  (1) reexamination, (2) a stay, and (3) substantive amendment of all asserted claims.  Of course, none of these things can be guaranteed.  And it is possible that the reexamination may render the claims stronger for the patent owner if not properly conducted or the prior art is weak.

And this raises another question:  What is the value of an intermediate (nonfinal) determination in a patent reexamination?  We will explore that in future posts.