United States: Beware Reexamination Amendments

In R+L Carriers, Inc. v. Qualcomm, Inc., the Federal Circuit affirmed the district court's dismissal of R+L's infringement claims against Qualcomm, finding that the claims issued after reexamination were not "substantially identical" to the original claims. Considering the claim language at issue and the court's comments, this decision suggests that almost any reexamination amendments could be found to be narrowing if the examiner cites them as supporting allowance.

The Patent at Issue

The patent at issue was R+L's U.S. Patent No. 6,401,078, directed to an improved method of consolidating freight into trailers to optimize delivery efficiencies of the loads in each trailer. The patent issued on June 4, 2002, with a single claim:

  1. A method for transferring shipping documentation data for a package from a transporting vehicle to a remote processing center:
    placing a package on the transporting vehicle;
    using a portable document scanner to scan an image of the documentation data for the package, said image including shipping details of the package;
    providing a portable image processor capable of wirelessly transferring the image from the transporting vehicle;
    wirelessly sending the image to a remote processing center;
    receiving the image at said remote processing center; and
    prior to the package being removed from the transporting vehicle, utilizing said documentation data at said remote processing center to prepare a loading manifest which includes said package for further transport of the package on another transporting vehicle.

(emphasis added)

The Reexamination Amendments

While R+L's infringement suit against Qualcomm was pending, R+L sought ex parte reexamination of the '078 patent based on prior art identified by a third party. The reexamination certificate issued with the following amendments to the preamble and final clause:

  1. A method for transferring shipping documentation data for a package from a transporting vehicle to a remote processing center comprising the steps of: . . .
    prior to the package being removed from the transporting vehicle, utilizing said documentation data at said remote processing center to prepare [[a]] an advance loading manifest document for another transporting vehicle which includes said package for further transport of the package on another transporting vehicle.

Qualcomm had ceased its allegedly infringing activity before the reexamination certificate issued. Thus, it only could be liable for infringement if the claims granted after reexamination were "substantially identical" to the original claims. The district court determined that they were not. The Federal Circuit affirmed, but focused on different claim language.

Substantial Identity Under 35 U.S.C. § 252

As discussed by the Federal Circuit, 35 U.S.C. § 252 governs infringement damages associated with reexamined patent claims:

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 issuance of the reexamined claims if the original and the reexamined claims are "substantially identical."

Thus, if the original claims are substantively changed during reexamination–regardless of why or whether the patentee intended to narrow the claim–a patentee is not entitled to damages for infringement that occurred before the reexamination certificate was issued.

In the case at hand, the Federal Circuit compared the original and reexamined claim language, and evaluated "whether there was any product or process that would infringe the original claim, but not infringe the amended claim." Although the district court had focused on the addition of the term "advance," the Federal Circuit determined that that claim amendment did not alter the scope of the claims (i.e., it was added only to improve clarity). However, the Federal Circuit found that the phrase "document for another transporting vehicle" did substantively change the claim scope:

R+L amended "loading manifest" to claim an "advance loading manifest document for another transporting vehicle." .... R+L made this amendment after the PTO rejected original claim 1 over various pieces of prior art .... The examiner expressly stated he was allowing amended claim 1 because "the manifest discussed by [the prior art] is a manifest for the current shipping vehicle and not an advance loading manifest document for another transporting vehicle." .... In other words, the examiner's focus in allowing the claims was ... on the additional limitation that the advance loading manifest be "for another transporting vehicle."

The Federal Circuit therefore concluded that "amended claim 1 is not 'substantially identical' to original claim 1 because original claim 1 encompassed scope that amended claim 1 does not." Accordingly, R+L was not entitled to damages for the time period prior to issuance of the reexamination certificate.

Were The Reexamination Amendments Narrowing?

Although the Federal Circuit applied a "normal claim construction analysis" to conclude the term "advance" did not substantially change the claim scope, the court appears to have given more weight to the examiner's comments than the claim language itself when it concluded that "for another transporting vehicle" did effect such a change. In particular, the court seems to have relied heavily on the examiner's comments that he was allowing the claims because of that amendment, and seems to have assumed that the amendment narrowed the claims to distinguish the prior art. But did it?

As shown by the highlight language in original claim 1, the original claim already recited that the loading manifest was for "another transporting vehicle." Reviewing the clause at issue as a whole, the added phrase regarding "another transport vehicle" seems clarifying at best and redundant at worst:

prior to the package being removed from the transporting vehicle, utilizing said documentation data at said remote processing center to prepare an advance loading manifest document for another transporting vehicle which includes said package for further transport of the package on another transporting vehicle.

While a court might believe that any amendment required by an examiner to overcome a prior art rejection necessarily must be narrowing, examiners frequently suggest amendments that clarify or emphasize features already recited in the claims. While applicants may agree to such amendments to obtain allowance, this case underscores the risks of doing so during a reexamination proceeding.

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.