A recent Federal Circuit en banc decision clarified the
scope of intervening rights as they pertain to patents that have
been reexamined. Marine Polymer Technologies, Inc. v. Hemcon,
Inc., 2010-1548 (Fed. Cir. March 15, 2012). The Federal
Circuit held that under 35 U.S.C. § 307, after a patent
emerges from ex parte reexamination, rights are available
"only with respect to 'amended' or 'new'
claims in the reexamined patent," slip op. at 20,
i.e. when the text of the claim changes during
reexamination or when new claims are added. In doing so, the
Federal Circuit sided with positions taken by Marine Polymers and
several of the amici curiae, including the Biotechnology
Industry Association (BIO) and Pharmaceutical Research and
Manufacturers of America (PhRMA), who "argu[ed] for a faithful
reading of the statutory text." (Slip op. at 18, 25).
Venable submitted the amicus brief on behalf of BIO and
PhRMA. (
www.venable.com/federal-circuit-vacates-opinion-in-marine-polymer-technologies-inc-v-hemcon-inc-02-16-2012).
To reach its conclusion, the Court relied on the dictionary
definition of "amended," the statutory language of
section 307, and patent prosecution practice. Id. at
22-23. First, the dictionary definition of "amended" is
"to alter formally by adding, deleting or rephrasing" and
thus, the Court held, does not include argument. Second, the Court
determined that any interpretation of section 307 that encompasses
disavowal or disclaimer by argument would be contrary to the
statutory language because "it is difficult to envision how
arguments about claim meaning could be 'incorporated into a
patent' by the Director of the PTO." Id. Third,
the court recognized that in patent prosecution, the term
"amended" denotes formal changes to the actual language
of the claim (with additions and deletions marked in the text).
Id. Accordingly, Judge Lourie writing for the 6-4 en
banc majority, noted that "[w]e thus cannot agree that a
claim can be 'amended' for the purposes of §307(b)
without changing the claim language itself." Id. at
23-24.
The court adopted a two-step analysis for determining if
intervening rights arise during reexamination: (1) whether the
asserted claim is amended or new; and (2) whether any such amended
or new claims were substantially changed. Id. at 21.
However, "[o]nly if the claim at issue is new or has been
amended may a court proceed to the second step of the analysis and
assess the substantive effect of any such change."
Id.
While the case pertains only to ex parte reexamination,
given the similarities in statutory language, the holding should
also apply to reissued patents, inter partes
reexaminations, and the new post-grant review and inter
partes review proceedings under the America Invents Act. The
Federal Circuit was split 6-4, with the dissent taking the position
of the vacated panel decision, that "amended" can include
patentee arguments about claim scope made during reexamination. The
upshot of the decision is that the District Court's holding of
infringement and assessment of damages is affirmed, and unless
HemCon successfully petitions for certiorari, the case is
closed.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.