intervening rights : CAFC Alert

Intent of Amendment is Irrelevant for Determining Intervening Rights

| 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

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

| 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)


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?

| 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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