The U.S. Court of Appeals for the Federal Circuit reversed a district court decision that a patent's claims were invalid for impermissible broadening during reexamination and found that amendments to an independent claim resulted in a substantive change to the claim. Predicate Logic, Inc., v. Distributive Software, Inc., Case No. 07-1539 (Fed. Cir., Oct. 9, 2008) (Linn, J.).
Patent owner Predicate Logic brought suit against Distributive Software for infringement of a patent directed to a universal data measurement, analysis and control method for use in a software development process. During the litigation, Distributive requested ex parte reexamination of the patent-in-suit. The claims were allowed as amended during reexamination via an Examiner's Amendment, without explanation. An amendment to independent claim 1 shifted the word "said" within a clause, changing the phrase "instantiating said at least one index" to "instantiating at least one said index." A further amendment to claim 1 substituted "first instantiating" and "second instantiating" steps for a single instantiating step. Distributive Software then successfully argued to the district court that the claims were invalid as being improperly broadened, in contravention of 35 U.S.C. § 305.
The Federal Circuit, after lecturing the patent owner and the U.S. Patent and Trademark Office for failing to make an adequate record to fulfill the public notice function of patents, decided the shifting of the word "said" did not broaden the claim. The Court opined that, in analyzing the breadth of the claim before and after amendment, the relevant question is whether any conceivable process would infringe the amended claim but not infringe the original claim. The Court concluded it could imagine no conceivable process that would infringe amended claim 1 but would not infringe original claim 1 of the '798 patent. The Court also noted that neither the district court nor the parties had identified such a process. Thus, the Court held the amendment of "said at least one index" to "at least one said index" did not broaden the scope of claim 1.
Regarding the substitution of two instantiating steps for one, Distributive Software did not argue this amendment broadened the claims, but rather that it effected a "substantive change" of scope to claim 1 by narrowing the claim, which prevented enforcement against infringing activity that occurred prior to issuance of the reexamination certificate under 35 U.S.C. §§ 252 and 307. The district court agreed, but the Federal Circuit reversed, noting that the un-amended "comparing" step of original claim 1 recites comparing data sets linked to a plural number of indexes generated and instantiated as part of the claimed process. Thus, even in the original claim, two instantiation steps are required. The Court therefore held that the amendment of the "instantiating" step to the "first instantiating" and "second instantiating" steps did not result in a substantive change to claim 1 for purposes of §§ 252 and 307.
Practice Note: Although it is generally desirable to keep comments regarding claim amendments to a minimum, unexplained amendments during reexamination invite trouble. When submitting proposed amendments, the patent owner should consider including arguments that the amendments are proper because they do not broaden the claims. Such remarks could also be submitted after an Examiner's Amendment.
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