Generally speaking, patent claims that are confirmed in reexamination without substantive changes retain all of the damages they would have obtained as if there was no reexam. [Note that there are always exceptional situations. For example, there are patent cases where a claim was not amended, but its scope was deemed to have been altered by cancellation of a dependent claim. See, for example, Univ. of Virginia Patent Foundation v. General Electric, case 3:08-cv-00025 in the U.S. Dist. Court for the Western Dist. of Virginia.]
Claims which have a substantive change in the reexam may prevent the patent owner from collecting damages that would have been available prior to the resultant reexamination certificate under certain circumstances. 35 U.S.C. 307. See also Laitram Corp. v. NEC Corp., 163 F.3d 1342, 1346 (Fed. Cir. 1998). And the doctrine of intervening rights affords judges the power to allow would-be infringers to use the patented invention with reduced or no exposure to infringement claims by the patent owner (a discussion of intervening rights is beyond the scope of this post and will be the subject of a future post).
But note that amendment of a claim to match the scope of an issued dependent claim is not a “substantive amendment.” In such cases, there is no lack of notice to the public because the dependent claim is deemed to stand on its own for purposes of infringement. 35 U.S.C. 112, para. 4, and see Bloom Eng’g Co. v. North American Mfg. Co, 129 F.3d 1247, 1250 (Fed. Cir. 1997).
And, of course, claims that are cancelled in reexamination do not qualify for damages.
So to crudely summarize the outcomes in reexam you could think of claim amendments in reexam this way:
- no substantive change = qualification for past damages and future damages
- substantive change = future damages only (and subject to intervening rights)
- cancellation = no damages
Of course, this is only a rough approximation of the process. Things get substantially more complex with the damages outcomes depending on the facts of any litigation. But what I intend to do here is lay the groundwork for how prosecution in view of reexamination can be performed to enhance recoverable damages in general.