March 15, 2021by Jacob Doughty

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


November 16, 2020by Jacob Doughty

Ex parte Sami Chems. & Extracts, Ltd., is a 2009 decision of the Board of Patent Appeals and Interferences (BPAI) that is listed among the Patent Trial and Appeal Board’s (PTAB) informative decisions. Ex parte Sami Chems. & Extracts, Ltd., is indicated by the PTAB to be informative as to “[n]ew grounds of rejection… claim construction.”

According to the PTAB’s Standard Operating Procedure, “[i]nformative decisions set forth Board norms that should be followed in most cases, absent justification, although an informative decision is not binding authority on the Board.”

In Ex parte Sami Chems. & Extracts, Ltd., the BPAI considered a request for rehearing on the issue of whether patentee was entitled to remand to the examiner – and thus a further opportunity to engage in prosecution in a reexamination proceeding – because the BPAI relied on a different claim construction than the examiner in upholding the examiner’s anticipation and obviousness rejections.

Independent claim 1 is an exemplary claim at issue:

A method of promoting lean body mass in a human individual in need thereof, comprising administering to the individual a lean body mass promoting effective amount of forskohlin.

In its decision affirming the examiner, the BPAI construed “promoting” as meaning “to help bring into being,” and concluded that the language “[a] method of promoting lean body mass,” was unambiguous.  Patentee argued that during prosecution, patentee and examiner had a common understanding that the term “promoting” meant “increasing,” under which construction, the rejected claims were patentable. Patentee argued that, in view of this difference in construction, it was entitled to “remand of the case to the Examiner, so that Appellants may amend the claims and otherwise respond to the outstanding rejections in a manner consistent with the new claim construction adopted by the Board.”

As explained by the BPAI, the criterion of whether a rejection is considered “new” in a decision on appeal is whether the appellant has had a fair opportunity to react to the thrust of the rejection. The BPAI acknowledged that it did not use the “same words” as the examiner in construing the claims, but noted that the BPAI and the examiner had considered the same prior art and evidence provided by patentee, and the “basic thrust of the rejection by the Examiner and the Board was the same.”

The BPAI further noted that, although the examiner did not explicitly construe the term “promoting” in the same manner as the BPAI, it could be inferred from the examiner’s reasoning – particularly with respect to anticipation – that the examiner viewed the claim in the same manner as the BPAI. The BPAI thus concluded that patentee had a fair opportunity to react to the rejections affirmed on appeal.

Patentee appealed to the Court of Appeals for the Federal Circuit (CAFC). The BPAI’s decisions were affirmed in a Rule 36 affirmance, and a reexamination certificate cancelling all claims was issued.

Takeaway: This case demonstrates: (i) the importance of presenting all amendments and evidence and reaching agreement with the examiner at the earliest opportunity in a reexamination proceeding, and (ii) the difficulty in relying on “procedural” arguments to carry the day before the PTAB. Reexamination proceedings are procedurally limited compared to ex parte prosecution. After an adverse decision from the PTAB in regular prosecution, applicant will have further opportunities to amend or present evidence (e.g., by filing a Request for Continued Examination or continuation application). Not so in a reexamination proceeding – only appeal to the CAFC will prevent issuance of an adverse reexamination certificate. While patentee’s attempt to reopen prosecution by asserting a new ground of rejection was understandable, something more than differences in the degree or manner of explanation between the examiner and the BPAI would have been necessary to prevail.

Judges: Spiegel, Delmendo, Grimes