Board’s Jurisdiction Over Examiner’s Decision Of Not Finding Substantial New Question Made As To Claims Added Or Amended After Institution Of Reexamination

Yoshiya Nakamura | September 30, 2015

Airbus S.A.S. v. Firepass Corp.

July 17, 2015

Before: Lourie, Dyk and Moore. Opinion by Laurie


In response to a patent infringement litigation brought by Firepass, Airbus requested inter partes reexamination with proposed anticipation rejections based on three prior arts. The PTO instituted reexamination based on one prior art but did not find substantial new question as to other two prior arts. During reexamination, Firepass added claims 91-94. In response, Airbus proposed obviousness rejections to claims 91-94 over the previously submitted three prior arts. Examiner did not find substantial new question of patentability. Airbus appealed but the Board dismissed because the Board did not have jurisdiction over the issue of lack of substantial new question of patentability. CAFC reversed because the Board applied incorrect rule which is only applicable before institution of reexamination. Newly added or amended claims during reexamination should be controlled by different rule (37 C.F.R. §1.948(a)(2)).

Firepass 社によって提起された特許侵害訴訟に対抗して、Airbus社は当事者系のリイグザミネーションを請求した。特許の無効理由は、3件の先行技術に基づく新規性であった。米国特許庁は、そのうち1件の先行技術による新たな特許性の疑義(substantial new question of patentability)を認めてリイグザミネーションを開始したものの、他の2件の先行技術については無効理由として不十分と判断した。リイグザミネーションの途中でFirepass社はクレーム91−94を追加した。これに対して、Airbus社は、先の3件の先行技術に基づく自明性の拒絶を提案した。審査官は、Airbus社の提案に新たな特許性の疑義を認めなかったため、Airbus社はアピールをした。米国特許庁審判部は、新たな特許性の疑義の問題は管轄外であるとしてAirbus社の請求を却下した。CAFCは、「いったんリイグザミネーションが開始された場合、その後に追加されたあるいは補正されたクレームに対して提出できる先行技術の問題は、規則1.948(a)(2)によって判断されるべきであり、特許庁審判部は適用すべきルールを誤った。」と判断し、Airbus社の提案した自明性の拒絶によってクレーム91~94が拒絶されるか否か検討するよう事件を差し戻した。 コメント:リイグザミネーションの請求時に無効理由が見つからず採用されなかった弱い引例であっても、他の引例でリイグザミネーションが開始された後に新しいクレームが追加されたり、あるいはクレームが補正された場合には、リイグザミネーションの請求者は、当該採用されなかった引例を再度使用して、それらの追加・補正クレームに対する拒絶理由を主張できる。

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Intent of Amendment is Irrelevant for Determining Intervening Rights

Andrew Melick | September 29, 2015

R+L Carriers, Inc. v. Qualcomm, Inc.

September 17, 2015

Before: Newman, O’Malley and Wallach. Opinion by O’Malley.


R+L Carriers (“R+L”) sued Qualcomm for patent infringement and subsequently filed an ex parte reexamination for the patent based on prior art identified by a third party. R+L amended the claims in the patent and argued that the amendment was merely a clarifying amendment that did not change the scope with respect to whether a step in the process is done manually or by computer. Qualcomm argued that the prior art disclosed performing the step manually, and thus, the claim must now be narrowed such that the step is performed only by computer. The CAFC held that reasons for an amendment in a reexamination are irrelevant with regard to intervening rights. The inquiry is strictly with regard to whether the claim scope of the amended claim is narrower than the original claim regardless of reasons for an amendment.


Legal Principles:

1. Intervening rights are described in 35 U.S.C. § 252 for reissued patents and § 252 is applicable to reexamined patents under § 307(b). A patentee of a patent that survives reexamination is only entitled to infringement damages for the time period between the date of issuance of the original claims and the date of issuance of the reexamined claims if the original and the reexamined claims are “substantially identical.”

2. “Identical” in § 252 does not mean verbatim. The determination is made by considering “whether the scope of the claims are identical, not merely whether different words are used.” The determination of whether an amended claim is narrower is whether there is any product or process that would infringe the original claims, but not infringe the amended claim.

Case details

R+L Carriers (“R+L”) sued Qualcomm for infringement of U.S. Patent No. 6,401,078 (“the ‘078 patent”). While the case was pending, R+L requested ex parte reexamination of the ‘078 patent based on prior art identified by a third party. The ‘078 patent is to an improved method of consolidating freight into trailers to optimize delivery efficiencies for the loads in each trailer. The patent describes two methods for getting the load planning information from the transmission and preparing loading manifests: (1) a computerized system automatically interpreting the data; and (2) a data entry clerk manually reviewing the information.

In the reexam, claim 1 was amended after being rejected as anticipated by a prior art reference from N&M Transfer company (“N&M”). N&M teaches a method for transferring shipping documentation data for a package from a transporting vehicle to a remote processing center. Claim 1 was amended as follows:

1. A method for transferring shipping documentation data for a package from a transporting vehicle to a remote processing center comprising the steps of:

placing a package on the transporting vehicle;

using a portable document scanner to scan an image of the documentation data for the package, said image including shipping details of the package;

providing a portable image processor capable of wirelessly transferring the image from the transporting vehicle;

wirelessly sending the image to a remote processing center;

receiving the image at said remote processing center; and

prior to the package being removed from the transporting vehicle, utilizing said documentation data at said remote processing center to prepare [a] an advance loading manifest document for another transporting vehicle which includes said package for further transport of the package on another transporting vehicle.

The PTO allowed the claim because the prior art reference only discussed a “manifest for the current shipping vehicle and not an advance loading manifest document for another transporting vehicle.”

The district court found that the amendment to the claims of R+L’s patent “substantively narrowed” the claim precluding recovery of damages for infringement prior to issuance of the reexam certificate. The district court stated that the ‘078 patent discloses both manual and computerized extraction of information and preparation of loading manifests, and the N&M prior art reference only discloses manual entry. The district court reasoned that the amendment adding the word “advance” was added to get around the N&M reference, and thus, claim 1 must include only computerized processing.

R+L argued that “loading manifests” in claim 1 was always limited to computerized processing. R+L stated that they only amended claim 1 to overcome the N&M reference by clarifying that the loading manifest must be a document for another transporting vehicle, rather than the current vehicle, and thus, the narrowing on which the district court relied for its judgment actually never occurred.

The CAFC held that claim 1 was substantively changed. However, it was not substantively changed due to a change to only computerized processing as argued by Qualcomm. Original claim 1 and amended claim 1 are broad enough to encompass both manual and computerized processing. The term “advance” was added to the claims for reasons unrelated to the format for preparing the loading manifests. Furthermore, speculation about what R+L was attempting to accomplish with regard to the N&M reference is irrelevant.

The CAFC held that the claim was substantively changed in a different way. In the reasons for allowance, the Examiner highlighted the claim 1 limitation reciting that the manifest is for another transporting vehicle as opposed to the current shipping vehicle as in the prior art. The Examiner did not comment on whether computerized processing was used. The CAFC stated that the Examiner’s commentary regarding why the claim was allowed reveals a method that would be covered by original claim 1 but not amended claim 1, i.e., the process of preparing a loading manifest “for the current shipping vehicle.”

For further support, the CAFC noted that during the reexamination, R+L stated in their interview summary that addition of “loading manifest document for another transportation vehicle” resulted in an agreement that the amendment would overcome the prior art. Thus, even if the amendment was added merely for “clarity” as argued by R+L, they understood that they were limiting the scope of their claim to get around the prior art. Therefore, the CAFC concluded that amended claim 1 is not “substantially identical” to original claim 1 and R+L is not entitled to infringement damages prior to issuance of the reexamination certificate.


In a reexamination or other post-grant review, a patent owner should be careful with amending claims and should limit discussion on the amendment as much as possible to preserve a possible damages award for the period prior to the reexamination certificate.

An accused infringer should consider requesting an ex parte reexamination or other post-grant review. Even if an accused infringer is not successful in invalidating a patent in a reexam or other post-grant proceeding, if the patent owner is forced to amend claims, damages may be reduced or eliminated. In addition, an amendment to the claims may make the accused product, device method, etc., no longer infringing.

Full Opinion

Patentee Likely (Con)vexed After The Court of Appeals Fails To See Through The Same Lens as them…

Adele Critchley | September 17, 2015

Dome Patent L.P., vs. Michelle K. Lee, Director, U.S. PTO.

September 3, 2015

Before: Reyna, Schall and Hughes. Opinion by Hughes.

The CAFC affirmed the decision of the District Court of the District of Columbia in U.S. Patent No. 4,306,042 (the ‘042 Patent) in which the District Court held that claim 1 would have been obvious to one of ordinary skill in the art since a single reference that teaches away will not prevent a finding of obviousness, if motivation can be found elsewhere.
The CAFC held that the district court did not err by only requiring the Patent Office to show that claim 1 of the ‘042 patent is obvious by a preponderance of evidence, since in re-examination there is no presumption of validity.

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Patent claims, previously definite pre-Nautilus, are now indefinite post-Nautilus

Nicolas Seckel | September 17, 2015

The Dow Chemical Co. v. Nova Chemicals Corp. (Precedential)

August 28, 2015

Before: Prost, Dyk (author), Wallach

This decision dispels any doubt that the Supreme Court changed the law of definiteness in its decision Nautilus Inv. v. Biosig Instruments, Inc. (2014).
In 2012, under the pre-Nautilus standard (patent claim is indefinite if “not amenable to construction” or “insolubly ambiguous”), the Federal Circuit had affirmed a jury verdict of infringement and no invalidity, including no indefiniteness.
This time, under the Nautilus standard (patent claim is indefinite if “fail[ing] to inform, with reasonable certainty, those skilled in the art about the scope of the invention”), the Federal Circuit reverses an award of supplemental damages in the same case, because the same patent claims are now held indefinite.

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