Pandora Jewelry, LLC v. Chamilia, LLC, 2008 U.S. Dist. LEXIS 61064 (D. Md., August 8, 2008)
The provisional rights statute 35 U.S.C. §154(d) creates the potential that a patentee may collect damages for would-be infringing activities that occurred even before the patent issued. To recover, the statute requires that the invention claimed in the published patent application be "substantially identical" to those found in the issued patent.
35 U.S.C. §154(d)(2): The [provisional rights] shall not be available under this subsection unless the invention as claimed in the patent is substantially identical to the invention as claimed in the published patent application.
The language found in Section 154(d) runs parallel to that found in 35 U.S.C. §252. Section 252 allows a reissue patent to have retrospective power when the reissued claims are "substantially identical" to those in the original patent.
In the present case, Pandora sued Chamilia for infringement of its patent covering necklace keeper attachments. Chamilia moved for summary judgment on several issues – Pandora's claim of provisional rights under §154(d).
The primary issue before the court was whether the patented claims were "substantially identical" to those in the published application. Like most patent applicants, Pandora had amended its claims during prosecution.
As a starting point, the court and parties agreed that the 'substantially identical' requirement of §154(d) was the same as that found in §252. This made analysis easier because the CAFC has interpreted §252's "substantially identical" requirement on several occasions. In particular, the appellate court circularly noted that a "substantially identical" claim is one that is "without substantive change." Laitram Corp (Fed. Cir. 1998). In that case, the court went on to provide a narrow interpretation – finding that "it is difficult to conceive of many situations in which the scope of a rejected claim that became allowable when amended is not substantially changed by the amendment."
"Under § 252, amended patent claims are "substantially identical" to the original claims "if they are without substantive change." Laitram Corp. v. NEC Corp., 163 F.3d 1342, 1346 (Fed. Cir. 1998) (internal quotations omitted). "[I]n determining whether substantive changes have been made, [a court] must discern whether the scope of the claims are identical, not merely whether different words are used." Id. (citing Slimfold Mfg. Co. v. Kinkead Indus., 810 F.2d 1113, 1115 (Fed. Cir. 1987)). Although not a per se rule, "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." Id. at 1348. Where a substantive change has been made to a claim, the allegedly harmed party has no provisional rights to assert."
In Laitram, the CAFC also made clear that even purely narrowing amendments will violate the "substantially identical" requirement.
Pandora's published patent application claimed a reversibly attached band. During prosecution, however, the applicant amended that element to be a "fixedly attached band." According to the district court in its Markman hearing, this was done "in order to overcome the PTO's rejection based on the prior art."
Based the amendment from a reversible band to a fixed band, the court concluded that Pandora had "substantively amended the scope of the claim." And thus, the patentee has no claim for any provisional rights. "Here, Pandora substantively altered the scope of the claim when it amended the patent to require a permanently fixed band. Because the issued patent is not substantially identical to the published patent application, Pandora has no provisional rights to assert."