en banc : CAFC Alert

“Strong Presumption” Not So Strong After all

Thomas Brown | June 25, 2015

Williamson v. Citrix

June 16, 2015

Opinion by Linn (joined by nine other Judges), Dissenting Opinion by Newman-Decided.

Summary:

En banc CAFC expressly overrules the “strong” presumption that a limitation lacking the word “means” is not subject to § 112, para. 6 and applies the presumptions prior to Lighting World, which do not require any heightened evidentiary showing. CAFC also overrules the strict requirement of “a showing that the limitation essentially is devoid of anything that can be construed as structure.”
When a claim term does not recite the word “means,” the presumption can be overcome and § 112, para. 6 will apply if one demonstrates that the claim term fails to “recite sufficiently definite structure” or recites “function without reciting sufficient structure for performing that function.” That is, the standard is “whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.”


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The threshold to acquiring intervening rights by reexamination requires new or amended claim language

Bernadette McGann | March 21, 2012

Marine Polymer Technologies, Inc. v Hemcon, Inc. (en banc)

March 15, 2012

Panel: Rader, Newman, Lourie, Bryson, Gajarsa, Linn, Dyk, Prost, Reyna and Wallach (en banc)

Opinion for the court by Lourie. Rader, Newman, Bryson and Prost join in full and Linn joins in part II (Intervening Rights)

Opinion for the dissent by Dyk. Gajarsa, Reyna, and Wallach join in full and Linn joins in parts I-II (Claim construction, dismissing HemCon motion for JMOL and/or new trial)

Summary:

Based on statutory interpretation of 35 U.S.C. §307(b), the Majority held that the threshold requirement for acquiring intervening rights is that there must be amended or new claims that did not exist in the original patent but have been found to be patentable during reexamination.  The CAFC held that amended means to make formal changes to the actual language of a claim.  A claim is not amended merely because the scope of the claim has been altered by arguments presented during reexamination.


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Will the Marine Polymer Expansion of Intervening Rights be Reversed?

Scott Daniels | January 30, 2012

A few days ago the CAFC issued a notice that it would review, en banc, last September’s 2-1 panel decision in Marine Polymer v. HemCon, specifically the holding that absolute intervening rights arise where a patentee narrowly construes its claims in reexamination, thereby “effectively amending” those claims, even without an actual amendment of the claims.  See 35 U.S.C. §§ 252 and 307(b).  Such intervening rights, of course, eliminate all damages for the period before the issuance of the reexamination certificate concluding the reexamination.  Until Marine Polymer, only a single trial had found intervening rights derived from argument alone.

There was, however, a dissent by Judge Alan Lourie who did not accept the “amendment in effect” argument.  For him, there is “threshold requirement in §§ 307(b) and 316(b) that intervening rights apply only to amended or new claims.”  Since that threshold requirement was not satisfied, there could be no intervening rights, Judge Lourie argued.


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