reexamination : CAFC Alert

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

| 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

| 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

Reexamined patent claims are assumed to be subset of original patent claims unless proven otherwise, for application of res judicata (claim preclusion).

| April 24, 2014

Senju Pharmaceutical Co., Ltd., Kyorin Pharmaceutical Co., Ltd., and Allergan, Inc. v. Apotex Inc. and Apotex Corp.

March 31, 2014

Panel: Newman, Plager (author) and O’Malley (dissent).

Background: Appeal from U.S. District Court for the District of Delaware.

Senju Pharmaceutical Co., Ltd. and Kyorin Pharmaceutical Co., Ltd. (collectively referred to as “Senju”) jointly own U.S. Patent No. 6,333,045 for aqueous pharmaceutical formulations of the antibiotic Gatifloxacin. Allergan is the exclusive licensee under this patent for ophthalmic uses, and produces under license eye drops for treating the “pink eye” infection. The eye drop formulation contains disodium edetate (EDTA) which improves passage of the antibiotic through the cornea of the eye.

Apotex Inc. is a Canadian generic drug manufacturer which plans to formulate an ophthalmic solution containing the antibiotic, to be marketed by Apotex Corp. which is based in the U.S. Following the procedure enacted under the Hatch-Waxman Act, Apotex (referring collectively to Apotex, Inc. and Apotex, Corp.) filed with the FDA in July 2007 an Abbreviated New Drug Application (ANDA) for a generic version of the ophthalmic drug containing the antibiotic. Also under this procedure, Apotex filed a patent certification with the FDA and notified Senju about the certification. [This notice is required when the ANDA applicant certifies that a patent named in the New Drug Application (NDA) for the original drug is “invalid, unenforceable, or will not be infringed by the manufacture, use, or sale” of the generic drug. After receiving the notice, the NDA holder may sue the ANDA applicant for patent infringement under the provisions of 35 USC §271(e)(2)(A).] As would be expected, Senju filed suit against Apotex, alleging infringement of claims 1-3 and 6-9 of the patent.

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Patent Infringement Litigation as a Double-Edged Sword: Invalidated Patents and Inequitable Conduct

| December 6, 2013

The Ohio Willow Wood Company (OWW) v. ALPS South LLC. (Alps)

Decided November 15, 2013

Before Dyk (Circuit Judge), Bryson (Circuit Judge) and Reyna (Circuit Judge).  Opinion by Reyna.

Keywords: collateral estoppel, obviousness, inequitable conduct, reexamination, and rule of reason.


OWW initiated a suit against Alps for patent infringement.  After a long legal battle including two ex parte reexaminations, two District Court proceedings, and two CAFC appeals, OWW lost two patents and was charged with inequitable conduct.


OWW is the owner of US Patent No. 5,830,237 (the ‘237 patent), entitled “Gel and Cushioning Devices,” filed on March 5, 1996.  The ‘237 patent disclosed cushioning devices designed to cover the residual stumps of amputated limbs, acting as a shape-conforming buffer, as illustrated below, to make the use of attached prostheses more comfortable.  The primary invention was a cushion liner comprising a fabric covering in the shape of a tube sock coated on only one side with mineral oil-based polymeric gels.


On December 27, 2004, OWW filed its complaint against Alps for infringement of the ‘237 patent.  After the District Court issued its Claim Construction order in the proceedings, Alps filed its first request for an ex parte reexamination of the ‘237 patent.  The District Court stayed the litigation for the duration of reexamination proceedings, pending resolution of the validity of the disputed patent.
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CAFC Reminds the Patent Office to Play Fair When Issuing New Grounds of Rejection and Evaluating Objective Evidence of Non-Obviousness

| October 3, 2013

Rambus Inc. v. Rea

September 24, 2013

Panel of Moore, Linn, and O’Malley, Opinion by Moore


The Court of Appeals for the Federal Circuit in Rambus Inc. v. Rea reminds Examiners and the Board of Patent Appeals and Interferences (now the Patent Trial and Appeal Board) that procedural checks remain in place for issuing new grounds of rejection. Examiners and the Board cannot bury a new ground of rejection in a decision, without ensuring that a patent applicant has had a fair opportunity to respond to the rejection. Indeed, whether the applicant has had a fair opportunity to react to the thrust of the rejection is reiterated as the ultimate determination of whether a rejection is considered “new”.

In line with the Federal Circuit’s recent decision in Leo Pharmaceutical Products v. Rea, Rambus is also a reminder that objective evidence of non-obviousness must be given due consideration and weight. Examiners and the Board cannot undercut an applicant’s objective evidence of non-obviousness through an overly stringent interpretation of the nexus and “commensurate in scope” requirements.

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Board Should Consider Appellee’s Grounds For Affirming Rejection Presented To Examiner During Reexamination, Even If Grounds Had Not Been Raised On Appeal

| February 6, 2013

Rexnord Industries v. Kappos

January 23, 2013

Panel:  Newman, Lourie, Prost.  Opinion by Newman.


In 2003 Habasit filed an infringement suit against Rexnord in the United States District Court for the District of Delaware for infringement of its U.S. Patent No. 6,523,680 (the ’680 patent).  Rexnord then requested inter partes reexamination of the ’680 patent, and the district court stayed the infringement suit pending completion of reexamination.

On reexamination, the examiner held all of the claims in the ’680 patent unpatentable for anticipation and obviousness.  Habasit appealed the examiner’s decision to the United States Patent and Trademark Office (PTO) Board of Patent Appeals and Interferences (Board).  On appeal, the Board reversed the examiner’s decision and held the claims patentable.

Rexnord appealed to the CAFC.  The CAFC affirmed that the claims are not anticipated, and reversed the Board’s determination that the claimed invention is not obvious in view of certain prior art.

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CAFC does not find means-plus-function in a “height adjustment mechanism”

| November 7, 2012

Flo Heathcare Solutions v. Kappos

October 23, 2012

Panel: Newman, Plager, and Wallach.  Opinion by Wallach.


The patentee sued the defendant for infringement.  The defendant then requested inter partes reexamination of the patent.  The trial judge stayed the infringement action, pending completion of the reexamination.  The patent reexamination examiner and the Patent Office Board rejected the claims as being anticipated by the prior art.  On appeal, the CAFC disagreed with the PTO Board’s claim construction; but even under the CAFC’s claim construction, it found that the claims were anticipated and therefore affirmed the PTO’s rejection of the claims

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Belkin v. Kappos: PTO’s Determination of the threshold issue in Reexamination is not appealable

| October 3, 2012

Belkin International, Inc. et al. v. David Kappos, Director, USPTO, et al.

Decided: October 2, 2012

Panel:  Rader, Lourie and Wallach. Opinion by Lourie.


This decision results from a pre-AIA appeal in an inter partes reexamination proceeding.  The issue in this appeal is whether a prior determination that an argument based on a given reference does not raise a substantial new question of patentability (“SNQ”) as to a claim when such an SNQ was raised with respect to certain other prior art is appealable.  The CAFC held that this determination is not appealable and that the proper course of action is to timely petition the Director to review the determination.

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If at first you don’t succeed ….

| May 18, 2012

In Re Baxter International, Inc.

(Reexamination No. 90/007,751)

May 17, 2012

Panel: Newman, Lourie, Moore.  Opinion by Lourie.  Dissent by Newman


The CAFC’s decision in In re Baxter Int’l, Inc. (Fed. Cir. 2012) highlights the distinction between a reexamination and a district court proceeding.  Specifically, the CAFC affirmed the Board of Patent Appeal and Interferences (“Board”) determination in a reexamination proceeding that claims 26-31 of U.S. Patent No. 5,247,434 (“the ‘434 patent”) are invalid – despite having previously held in a parallel litigation proceeding that the same claims were not invalid – because the courts and the USPTO use different standards to address validity.  However, the CAFC cautioned that had the claims been found to be invalid in the litigation proceeding after all appeals had been exhausted, then the PTO “ideally should not arrive at a different conclusion” during a parallel reexamination proceeding when presented with the same arguments.

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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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