Intervening rights address the impact on third parties when a patentee makes substantive changes to the scope of patent claims in a post-grant proceeding (reissue, reexamination, AIA trial). Courts have recognized that such changes in claim scope leave “the door … open for gross injustice” when a third party, having already begun to make, use, or sell a given article, finds its previously lawful activities subsequently infringing under a modified patent. Marine Polymer Techs., Inc. v. Hemcon, Inc., 672 F.3d 1350, 1361 (Fed. Cir. 2012).
Intervening rights wholly protect a third party from infringement liability for activity prior to issuance of claims changed in post-grant proceedings (absolute intervening rights). However, whether there is infringement liability for continued activity after issuance of the changed claims is decided by judges (equitable intervening rights). The CAFC recently considered whether a district court properly granted summary judgment as to equitable intervening rights in John Bean Techs. Corp. v. Morris & Assocs., 2020-1090 (Fed. Cir. Feb. 19, 2021).
John Bean was the owner of a patent directed to poultry chillers. Morris sent a letter to John Bean in 2002, arguing that the patent was invalid over prior art. John Bean did not respond, and Morris proceeded to develop and sell poultry chillers. In 2013 – 11 years after Morris sent its letter – John Bean filed a request for ex parte reexamination, which issued with amended claims in 2014. Six weeks after the reexamination certificate issued, John Bean sued Morris. After several years of litigating, the district court granted Morris summary judgment based on its assertion of equitable intervening rights.
In granting summary judgment, the district court considered a number of factors relating to the type and amount of investments in poultry chillers made by Morris before the reexamination certificate issued. Morris noted its “years of research, developments, investments, improvement, promotion, and goodwill associated with the accused product” and conversion of “nearly [two-thirds] of its business to selling the accused product.” John Bean focused on one factor: whether Morris made profits sufficient to recoup its investment. John Bean argued that Morris had fully recouped (and then some) any monetary investment made in reliance on the scope of the claims of the original patent, and this should foreclose the grant of equitable intervening rights.
The CAFC disagreed, stating:
… recoupment is not the sole objective of [the intervening rights statute’s] protection of “investments made or business commenced” before the claims’ alteration… We see no indication in the statute that monetary investments made and recouped before reissue are the only investments that a court may deem sufficient to protect as an equitable remedy.
Noting the district court’s finding that John Bean’s delay was in bad faith, and Morris’s investment was more than just a financial investment, the CAFC affirmed summary judgment. Thus, Morris was permitted to continue unfettered in its poultry chiller business.
Takeaway: Neither patent applicants nor examiners are omniscient, so patentability/validity issues may arise after a patent issues. When considering – or being forced by a third party to consider – post-grant proceedings, it is important to appreciate the risks associated with amending the claims of an issued patent. Of course, the best course of action is to preserve useful, original patent claims. If this is not possible, a patentee should correct defective patent claims with deliberate speed and awareness of the activities of competitors in the marketplace.
Judges: Laurie, Reyna, and Wallach
The Federal Circuit’s recent decision in SIMO Holdings, Inc. v. Hong Kong uCloudlink Network Technology Limited (decision) highlights the importance of English grammar when drafting, revising, and amending patent claims in the U.S.
In SIMO, the relevant claim language reads:
A wireless communication client or extension unit comprising a plurality of memory, processors, programs, communication circuitry, authentication data stored on a subscribed identify module (SIM) card and/or in memory and non-local calls database, …
which, for purposes of discussion, can be rewritten as:
A … comprising a plurality of A, B, C, D, E and F, …
The District Court construed the important phrase “a plurality of” to require only “at least two” members selected from the entire list of A-F (e.g., A and B, A and F, C, D, and E, etc.), and as a result found the claim to be infringed. The Federal Circuit disagreed with this claim interpretation, however, and interpreted the claim to require at least two of each of the listed items.
The Federal Circuit based its decision on a very well-known English grammar sourcebook (William Strunk, Jr. & E.B. White, The Elements of Style) and on its earlier SuperGuide decision where it found that, as a matter of ordinary and customary meaning, a phrase grammatically comparable to “a plurality of” at the start of a list of items, joined together by “and”, applied to each item in the list, not to the list considered as a whole. The court further noted that the mix of plural, singular, and mixed-use forms of words in the list following “a plurality of” (“memory,” “processors,” “programs,” “circuitry,” “data,” “database”) made the SIMO phrase “a bit of a mess grammatically” and explained that, because the list uses “and” rather than “or,” the phrase is properly understood as if the word “of” appears before each item (i.e., a plurality of A, of B, of C, of D, of E and of F). As a result, and given the proper interpretation of the claim, the court determined that there was no infringement.
Takeaway: The SIMO case provides a good reminder to review U.S. claims for both accuracy and English grammar, either prior to submission (e.g., in a preliminary amendment) or in response to an Official Action.
Judges: O’Malley, Wallach, Taranto
Typically, the first step in mounting an obviousness challenge is to determine the scope and content of the prior art. However, more than just an early publication date is required for a reference to qualify as prior art against a given claim – it must also be “analogous.”
Traditionally, two separate tests are used to define the scope of analogous prior art: (1) whether the art is from the same field of endeavor as the claimed invention, regardless of the problem addressed and, (2) if the reference is not from within the field of the inventor’s endeavor, whether the reference is reasonably pertinent to the particular problem with which the inventor is involved. Recently, in Donner Technology, LLC v. Pro Stage Gear, LLC, (decision) the Federal Circuit clarified test (2) – the “reasonably pertinent” test.
In Donner the issue was whether Mullen, directed to supported electrical relays, was analogous to the target patent, directed to a guitar effects pedalboard. While the PTAB held that Mullen was not analogous, the Federal Circuit disagreed.
In explaining its decision, the Federal Circuit clarified that the dividing line between reasonable pertinence and less-than-reasonable pertinence ultimately rests on the extent to which the reference of interest and the claimed invention relate to a similar problem or purpose. Thus, when addressing whether a reference is analogous art with respect to a claimed invention under a reasonable-pertinence theory, the problems to which both relate must be identified and compared. This identification and comparison, the court noted, must be from the perspective of one of ordinary skill in the art who is considering turning to art outside their field of endeavor, and the question that must be answered is whether this person “would reasonably have consulted” the reference in solving the relevant problem even if they did not understand each and every last detail of the reference.
In applying this framework to the PTAB’s decision the Federal Circuit found several points lacking, and vacated their decision while providing a helpful “roadmap” to follow when addressing the issue of analogous art.
Judges: Prost, Dyk, Hughes
We are all aware of the challenges that prosecuting a claim including the term “about” can raise during prosecution – whether it is definite, whether it is defined explicitly or in some other form in the specification, etc. – but the recent Federal Circuit case Par Pharmaceutical, Inc. v. Hospira, Inc. (Fed. Cir. 2020) (decision) demonstrates the possible usefulness of the claim term “about”, and perhaps justifies the extra effort that can be necessary to bring such a claim to allowance.
In Par Pharmaceutical, the Federal Circuit found that Hospira’s generic allergy drug containing 9 mg/ml of a tonicity regulating agent literally infringed Par patents requiring “about 6 to 8 mg/mL of a tonicity regulating agent”, thereby avoiding all the issues that surround (and generally reduce or defeat) an allegation of infringement under the Doctrine of Equivalents.
Relying on the fact that Hospira had agreed that “about” meant, simply, “approximately” and on the District Court’s pretrial order that “[t]he extent of the term ‘about’ must be determined using a functional approach” the Federal Circuit found that the claim term ‘about’ avoided a strict numerical boundary of the specified parameter and was instead confined to what a person having ordinary skill in the art would reasonably consider ‘about’ to encompass. And because neither party proposed a claim construction based on intrinsic evidence (i.e., amendments and arguments made during prosecution, specification definitions, etc.), the Court explained that the scope of the term “about” must be tied to the purpose of the limitation in the claimed invention—not the purpose of the invention itself.
Then, in agreeing with Par’s expert, who explained that the limitation’s endpoints were not critical and that, given the purpose of the limitation, a relevant artisan would reasonably understand 9 mg/ml to fall within “about 6 to 8 mg/mL”, the Federal circuit affirmed the District Court’s finding of literal infringement, finding that such an expansion of the limitation was only a “modest amount”.
Takeaway: As mentioned above, this finding of literal infringement through the use of the claim term ‘about’ avoided consideration of all of the events that typically occur during prosecution and which generally narrow any possible application of the Doctrine of Equivalents, and delivered a significant victory to patentee. In view of this, consideration should be given to including the term ‘about’ in one or a few claims of a given claim set.
Judges: Dyk, Taranto, Stoll