By Dennis Crouch
Marine Polymer Tech. v. HemCon, Inc. (Fed. Cir. 2011)
The Court of Appeals for the Federal Circuit has announced that it will hold an en banc rehearing of the Marine Polymer Tech case. Straying from its recent practice, the Court has not suggested any particular questions that it will address nor did the Court offer to receive friend-of-the-court briefs filed without leave. Thus, under the Federal Circuit rules of practice, any amicus curiae may file a brief only with either (1) leave of court
or (2) leave of all parties to the appeal. (Fed. Cir. R. 29).
The initial appellate decision focused on the potential for intervening rights created by patentee arguments made during reexamination. Here, the court held that that a narrowing claim construction argument made by the patentee in a reexamination gives rise to absolute intervening rights for an accused infringer's products made or sold prior to the reexamination request. An important quirk of the case is that the narrow construction that the patentee suggested to the PTO was the same construction that had been ordered by a district court in this case. Thus, at the time, the argued-for construction was seen as the true construction rather than a narrowing construction. However, the argued-for construction became narrowing after-the-fact once the Federal Circuit rejected the lower court's construction as unduly narrow.
The majority opinion was written by Judge Dyk and Joined by Senior Judge Gajarsa. Judge Lourie filed a dissent that looked to the patent statute for guidance on the legal scope of intervening rights. He argued that the statute does not create intervening rights based upon arguments but rather only apply to "amended or new claims." See 35 U.S.C. §§ 307(b), 316(b), and 252.
The question suggested by the plaintiff-appellate Marine Polymer follows Judge Lourie's dissent:
Whether arguments made regarding a patent claim during reexamination of a patent give rise to intervening rights under 35 U.S.C, §§ 307(b) and 252, where the patent claim in question is neither "amended" nor "new" in the reexamination.
Intellectual Ventures filed a brief supporting the en banc rehearing – noting its "concern with the panel's redefining of the term 'amended claim' to include original claims that have not been textually altered."
In response, HemCon argued that Marine Polymer's formalistic argument does not make sense. In particular, HemCom noted that it would be odd "to adopt a rule under which intervening rights would apply when claims are substantively changed during reexamination by altering the actual language of the claims, [but] would not apply when claims are substantively changed through arguments made to the USPTO."
There is some tension between this decision and that of Bettcher Industries v. Bunzl USA (Fed. Cir. 2011). In Bettcher Industries, the court held that the estoppel provisions of 35 U.S.C. § 315(c) only apply once all appeal rights have been exhausted. In addition, the case is directly in tension with Laitram Corp. v. NEC Corp., 163 F.3d 1342 (Fed. Cir 1998). In that decision (penned by Judge Lourie), the court followed a two step process to determine whether intervening rights applied. First, the court looked to determine whether the text of the patent claim had changed. Since the text had changed in that case, the court then looked to see whether the change was "substantial."
My expectation is that this decision will be reversed by a strong majority on rehearing.