United States: It's A Jungle Out There: A Reexamination Certificate Containing Amended Claims May Be Insufficient To Vacate A Prior Judgment Of Invalidity

In a case with a unique procedural history the Federal Circuit addressed whether claims amended during an ex parte reexamination proceeding required vacating a prior judgment of invalidity (on patent eligibility grounds) on the original claims. While stressing the discretion of the district court, the Federal Circuit in Cardpool, Inc. v. Plastic Jungle, Inc. (Fed. Cir. Apr. 5, 2016) suggested that a reexamination certificate containing new and amended claims, on its own, is an insufficient basis for vacating a prior judgment of invalidity but that res judicata might not necessarily apply to the amended claims.

Case History

Cardpool sued Plastic Jungle for infringement of U.S. Patent No. 7,494,048 in 2012 in the Northern District of California. On January 22, 2013, the district court granted Plastic Jungle’s motion to dismiss on the grounds that the claimed subject matter is patent ineligible under 35 U.S.C. § 101. Further, the motion to dismiss was granted “with prejudice.” Cardpool then appealed the district court’s judgment to the Federal Circuit.

In June 2013, before the appeal was decided, Cardpool filed a request for ex parte reexamination. In the request, Cardpool presented amended and additional claims, alongside certain of the original claims. The PTO granted the request for reexamination.

Before the reexamination was complete, on January 30, 2014, the Federal Circuit issued a Rule 36 affirmance of the district court’s judgment of invalidity under § 101. Seven days later, the PTO issued a notice of intent to issue a reexamination certificate. The certificate issued on February 27, 2014 and only certain amended claims and new claims were deemed patentable (note that § 101 issues were not considered in the reexamination).

One day later, on February 28, 2014, Cardpool filed a petition for rehearing asking that the Federal Circuit’s affirmance of the district court’s § 101 judgment be vacated, because the claims at issue no longer existed. On April 29, 2014, the Federal Circuit granted rehearing, and remanded to the district court “to determine what actions, if any, are appropriate in light of the reexamined claims.” Cardpool, Inc. v. Plastic Jungle, Inc., 564 F. App’x 582, 583 (Fed. Cir. 2014). However, the Federal Circuit declined to vacate the district court’s § 101 judgment, because “it would not be appropriate in this context to vacate the district court’s judgment because Cardpool, the losing party below, caused the change in circumstances.”

On remand, the parties filed a joint motion, under Fed. R. Civ. P. 60(b), asking the district court to vacate its § 101 judgment, so that the parties could file a voluntary motion to dismiss without prejudice. The joint motion explained that Plastic Jungle had abandoned the business that was accused of infringement, and that Cardpool no longer believed its case was “viable or necessary.” The joint motion further asked the district court to vacate the § 101 judgment, because the claims at issue in the judgment were no longer in existence (in light of the PTO’s reexamination certificate). Along with the joint motion, Cardpool filed a separate brief in which it explained that the litigation was not settled and, if the judgment was not vacated, Cardpool may lose the right to file a new case against Plastic Jungle with respect to the new claims found in the reexamination certificate.

On May 30, 2014, the district court denied the joint motion to vacate and held:

Since the mootness was due to a voluntary act by Cardpool (the losing party), vacating the final judgment is not appropriate. This order finds that it would be against the public interest for Cardpool (the losing party) to displace our final judgment by simply commencing an ex parte agency reexamination and amending its invalid claims.

Shortly thereafter, Cardpool appealed.

The Appeal

The only issue on appeal was whether the district court was correct in denying the motion to vacate its § 101 judgment. Cardpool argued “it would be inequitable to preserve the final judgment ‘with prejudice’ because the subject of that judgment no longer exists and that the judgment with prejudice could improvidently strip argued patent rights from Cardpool through the res judicata effect.”

Cardpool’s concern arose from the Federal Circuit’s decision in Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335 (Fed. Cir. 2012). The Aspex court held that a settlement and resultant dismissal with prejudice was res judicata against a later suit when infringement reoccurred, although the claims were different due to reexamination. However, in reaching this holding, the court determined that the reexamined claims were simply “new versions” and not “materially different” from an original claim, and thus did not “create a new legal right against infringement that Aspex lacked under the original version of the patent.”

Cardpool argued that its facts were different than those in Aspex, because the § 101 judgment was pending on appeal when the PTO issued the reexamination certificate, which either amended or eliminated the claims subject to the § 101 judgment.

The Federal Circuit affirmed the district court’s denial of the motion to vacate, because there was no longer any case or controversy. Because Plastic Jungle was not alleged to have infringed any of the reexamined claims, Cardpool’s only concern was that it may be “estopped from acting in the future against any infringement upon the new reexamined claims.” In doing so, the Court noted, in dicta, that “[d]ismissal ‘with prejudice’ operates as res judicata as to the same cause of action” and that “the issue of validity of the reexamined claims remains to be addressed in any future proceeding.”


Those engaged in reexaminations (or other post-grant proceedings) should be aware that a reexamination certificate containing new or amended claims may be an insufficient reason on which to vacate a prior judgment of invalidity, but that res judicata may not necessarily apply to such claims as the issue would appear to turn on whether those claims are “materially different” from the original claims.

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.

Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
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
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

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 or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq 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 of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions