Marine Polymer v. Hemcon - Federal Circuit Limits Intervening Rights to Amended Claims

In Marine Polymer Tech. v. Hemcon, the Federal Circuit held claims must be amended or new to trigger intervening rights during reexamination. Intervening rights are derived from 35 USC 252 and 307(b) which indicate following reexamination a patent owner cannot claim damages for pre-reexamination infringement if the claims were amended and not substantially identical to the original claims.

In this case, Marine Polymer's arguments narrowed the scope of the claims, but stopped short of amending them. The Federal Circuit rejected Hemcon's request for intervening rights based on this, because (1) the PTO confirmed the original claims were patentable; (2) Sections 252 and 307(b) state intervening rights follow reexamination only as to amended or new claims; (3) the PTO is unlikely to consider a patent claim to be narrowed based on an argument; and (4) if claims require amendment for allowance, the examiner would require it.

Although the intervening rights vote was split 6 to 4, the majority appears to have it right. The public and patent owners need to know when intervening rights can be raised as a defense. Too much money changes hands to have it any other way. Thus, the statute requires a claim be new or amended to trigger intervening rights. If we accept any narrowing argument can raise intervening rights, I expect requests for intervening rights in many cases, i.e., whenever an argument is raised for patentability. Of course, examiners should interpret claims as broad as is reasonably consistent with the specification and require an amendment when necessary to distinguish a claim over the prior art rather than settle for arguments that have no correspondence to the claim language.

Copyright © 2012 Robert Moll. All rights reserved.