Reissue/Reexam/IPR/PGR: Relation Back; Intervening Rights

a) abatement

  • BASICS: REISSUE MAY ABATE PRE-REISSUE LIABILITY (Sec. 252, 1st ¶): Reissue surrenders original patent so original patent cannot be infringed once it is reissued; “the original claims are dead.” Seattle Box I (Fed. Cir. 03/26/84). “Cancelled claims [are] void ab initio” and “suits based on cancelled claims must be dismissed.” Fresenius (Fed. Cir. 07/02/13) (long discussion of legislative history and case law on this point) (2-1); cf. SHFL Entm’t (Fed. Cir. 05/02/18) (non-precedential) (civil action must be dismissed as moot on claims cancelled by reexamination certificate; whether cause of action abated as to new and amended claims (and thus case moot as to those claims as well) turns on whether they are substantially identical to the originally asserted claims so that issue is remanded to trial court); Target Training (Fed. Cir. 04/22/16) (non-precedential) (aff’g dismissal of action as moot where all issued claims cancelled in reexamination and new claims added in reexamination not added to the action); Lexington Luminance (Fed. Cir. 02/09/15) (appeal of indefiniteness judgment not moot despite claims being amended in reexamination because if original claim were valid then “on remand Lexington may be entitled to past damages for infringement of the original claim, absent a finding of intervening rights or a judgment of noninfringement or invalidity on other grounds. Accordingly, an actual controversy based on the originally issued claim still exists, and the parties maintain a legally cognizable interest in the outcome of this appeal.”); Delorme Publishing (Fed. Cir. 11/12/15) (implying that claims invalidated in court are not void ab initio: refusing to overturn ITC contempt order despite later judgment of patent invalidity: “ePlus is inapplicable here because ePlus involved the Patent Office’s cancellation of claims, which voids claims ‘ab initio.’”). But, reissue claim has retroactive effect from the original patent grant if it is not substantively changed from a claim in the original patent. See 35 U.S.C. § 252, ¶ 1 (“in so far as the claims of the original and reissued patents are substantially identical, such surrender shall not affect any action then pending nor abate any cause of action then existing, and the reissued patent, to the extent that its claims are substantially identical with the original patent, shall constitute a continuation thereof and have effect continuously from the date of the original patent.”) (“substantially” added Nov. 1999); Bloom Eng’g (Fed. Cir. 11/21/97) (substantively changing claim in reissue or reexamination “is treated as an irrebuttable presumption that the original claims were materially flawed. Thus the statute relieves those who may have infringed the original claims from liability during the period before the claims are validated.”); Institut Pasteur (Fed. Cir. 12/30/13) (same). “Substantially identical” means “without substantive change.” See Seattle Box I (Fed. Cir. 03/26/84) (claims broadened where cover not only spacer blocks ‘greater than’ but also ‘substantially equal to’ the diameter of the pipes in a bundle); Kaufman (Fed. Cir. 12/16/86) (Rich, J.). Whether reissue/reexamination claim relates back to original patent is not a question of “intervening rights”—the subject Sec. 252, ¶ 2. Kaufman (Fed. Cir. 12/16/86) (Rich, J.); Fortel (Fed. Cir. 08/11/87). Whether claims are substantively different is a question of law. Laitram II (Fed. Cir. 12/18/98); but see Laitram I (Fed. Cir. 01/30/92) (rev’g Summ. J. in view of material fact disputes raised by expert declaration).
  • BASICS: RXN. CERTIFICATE MAY ABATE PRE-RXN. CERTIF. LIABILITY: Reexamination statute (e.g., 35 U.S.C. § 307(b)) read to adopt all of Sec. 252 including 1st para. re. relation back to original grant. Kaufman (Fed. Cir. 12/16/86) (Rich, J.) (“Because the reexamination claims are without substantive change from the original claims and therefore are legally ‘identical’ within the meaning of § 252, Lantech can recover damages for infringing activities performed before the date of the reexamination certificate. …. All the reexamination claims have continuous effect from the date of the original patent.”); Fortel (Fed. Cir. 08/11/87) (“the amended claims in the reexamination certificate were not substantively identical with the original claims, thus precluding enforcement of the amended claims for the period before the certificate issued.” This is not an issue of intervening rights which concerns post-Certificate activities). See R+L Carriers (Fed. Cir. 09/17/15) (reexamination claims not substantially identical to patent’s claims where language added to claim to narrow it to avoid a prior art reference); but see Convolve II (Fed. Cir. 02/10/16) (rev’g “intervening rights” judgment because limitation added in reexamination was already part of claim as properly interpreted under Phillips in view of the original prosecution history in particular, despite Reexamination Examiner view that limitation was not required under “broadest reasonable interpretation”). Statute, however, states that reexamination certificates are treated in same manner for “amended or new” claims in the reexamined patent, and only for persons who qualify for intervening rights. Reexamination does not surrender the original patent and “claims that emerge from reexamination do not create a new cause of action that did not exist before.” Aspex Eyewear (Fed. Cir. 03/14/12). “Congress expected reexamination to take place concurrent with litigation, and that cancellation of claims during reexamination would be binding in concurrent infringement litigation.” Fresenius (Fed. Cir. 07/02/13) (ex parte reexamination, initiated three years after filing DJ suit, extinguished $23.5 MM damages judgment, because appeal re post-verdict royalty award was still pending, so no executable judgment had entered) (2-1), en banc denied (over four dissenting ops.) (Fed. Cir. 11/05/13).
  • TIPS:

b) intervening rights

  • BASICS: INTERVENING RIGHTS (Sec. 252, 2nd ¶): Sec. 252, ¶ 2 provides “intervening rights” for new or amended claims, i.e., when none of the infringed claims of the reissue patent were present in the original patent. Seattle Box I (Fed. Cir. 03/26/84). First sentence of Sec. 252, ¶ 2 provides “absolute intervening rights” for “the specific thing” made, purchased, offered to sell, sold, imported or used, before the grant of the reissue patent. BIC Leisure (Fed. Cir. 08/04/93); Shockley (Fed. Cir. 05/09/01) (“This ‘specific thing’ terminology suggests that the tangible article was in existence before the reissue date.”). Second sentence of Sec. 252, ¶ 2 provides “equitable intervening rights”: Court in its discretion may allow continued making, selling, etc. of things for which “substantial preparation was made before the grant of the reissue” “under such terms as the court deems equitable for the protection of investments made or business commenced before the grant of the reissue.” Id.; Seattle Box II (Fed. Cir. 03/20/85); Shockley (Fed. Cir. 05/09/01) (trial court within its discretion to deny equitable intervening rights to a willful infringer). Reexamination certificates treated in same manner, per 35 U.S.C. § 307(b), but only for “amended or new” claims in the reexamined patent. See Marine Polymer (Fed. Cir. 03/15/12) (en banc, opinion of court, 6-4). An affirmative defense. Underwater Devices (Fed. Cir. 09/23/83).
  • Arguments During Reexamination Cannot Create Intervening Rights If Words Of The Claim Are Not Amended: Statute requires that claim be “amended or new,” so even if arguments narrow scope of the claim, that cannot create intervening rights. Marine Polymer (Fed. Cir. 03/15/12) (en banc, opinion of court, 6-4) (dicta).
    • AIA: Amended or new claim added by inter partes review or post grant review “shall have the same effect as that specified in section 252 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 therefor, before the issuance of a certificate.” 35 U.S.C. §§ 318(c), 328(c) (AIA).

c) “substantially identical” claim scope

  • Factors To Consider To Detect “Substantive Change: “The relevant inquiry is whether the scope of the amended claims is actually identical to the scope of the original claims based on normal claim construction analysis.” Presidio (Fed. Cir. 11/21/17) (aff’g intervening rights; claims not substantially identical after amended to add words “by measurement,” where “under the scope of the original claims, theoretical calculations are sufficient to satisfy the claim limitations. Under the amendment claims, they are not.”) “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 I (Fed. Cir. 01/30/92). “An amendment that clarifies the text of the claim or makes it more definite without affecting its scope is generally viewed as identical for the purpose of § 252.” Bloom Eng’g (Fed. Cir. 11/21/97) (citations omitted) (adding underscored words to claim, “injecting a stream of gas separate from the combustion air stream into said flue gas stream,” was substantive change because it excluded an injected gas stream that includes combustion air, and was necessary in order to distinguish newly cited prior art.); see Minco (Fed. Cir. 09/10/96) (replacing “furnace” with “housing” did not substantively change claim scope).
  • Not All Amendments After A Prior Art Rejection Constitute A Substantive Change: There is no per se rule that claim amendments made after a prior art rejection constitute a substantive change, although they normally are. Laitram I (Fed. Cir. 01/30/92); Laitram II (Fed. Cir. 12/18/98) (“Although it is difficult to conceive of many situations in which the scope of a rejected claim that became allowable when amended is not substantively changed by the amendment, we arrive at our conclusion, not through any “per se rule,” but in light of an overall examination of the written description, the prosecution history and the language of the respective claims.”)
  • “Substantive Change” Standard Also Applied to Intervening Rights: Although only 1st para. of Sec. 252 refers to “substantially identical,” the 2nd para. has been read to have same trigger. See Marine Polymer (Fed. Cir. 03/15/12) (en banc, opinion of court, 6-4) (“Intervening rights do not accrue, however, where the accused product or activity infringes a claim that existed in the original patent and remains ‘without substantive change’ after reissue.”)
  • Presents A Question Of Law: Question of law. Laitram II (Fed. Cir. 12/18/98); but see Laitram I (Fed. Cir. 01/30/92) (rev’g Summ. J. in view of material fact disputes raised by expert declaration).

d) relationship to pending litigation

  • Reexam Cancellation Of Claims Prior To Mandate Ending Litigation, Extinguishes Cause Of Action: Action was on second appeal re stayed judgment of damages and post-verdict damages of $23.5 MM, liability having been decided on earlier Fed. Cir. appeal, when PTO cancelled claims (of expired patent) per Fed. Cir. aff’g PTO ex parte Reexamination ruling. That cancellation of claims extinguished infringement cause of action and mooted the litigation despite earlier Fed. Cir. mandate aff’g infringement liability. Although under claim preclusion “the cancellation of a patent’s claims cannot be used to reopen a final damages judgment ending a suit based on those claims,” here there was no “final judgment” for claim preclusion purposes. While district court’s liability judgment was “final for purposes of appeal, and that judgment might have been given preclusive effect in another infringement case between these parties, it was not sufficiently final to preclude application of the intervening final judgment” in the reexamination proceeding, because mandate ending the litigation had not yet issued. Fresenius (Fed. Cir. 07/02/13) (2-1, Newman, J. dissenting).
  • Intervening Rights May Arise Post Judgment (Maybe): Marine Polymer (Fed. Cir. 09/26/11) (post judgment reexamination certificate) (vacated and rehearing en banc granted (Fed. Cir. 01/20/12)); see Marine Polymer (Fed. Cir. 03/15/12) (en banc, opinion of court, 6-4).
  • Intervening Rights May Arise Even If Reissue Merely Adds A Narrower Claim: Allowing reissue that merely added a dependent claim, noting that intervening rights may apply. In re Tanaka (Fed. Cir. 04/15/11).
  • PTAB Final Written Decision Of Unpatentability Does Not Extinguish Patent Or Make It Invalid: Only a Patent Office cancellation of the patent at the expiration of all appeals extinguishes the patent. In re 337-TA-945 (Cisco v. Arista Networks) (ITC Comm’n 08/16/17) (refusing to terminate remedial order against Arista imports despite PTAB final written decision that the claims are unpatentable).
  • TIPS: