Marine Polymer Technologies, Inc. v. Hemcon, Inc.
672 F.3d 1350
| Fed. Cir. | 2012Background
- Marine Polymer owns the '245 patent on biocompatible poly-β-1→4-N-acetylglucosamine (p-GlcNAc) polymers and their purification.
- Independent claim 6 recites a biocompatible p-GlcNAc with specified polymer characteristics, including potential deacetylation and size limits.
- The district court adopted a narrow biocompatible construction: no detectable biological reactivity in biocompatibility tests.
- HemCon sought ex parte reexamination; the PTO adopted a broader construction and canceled several dependent claims during reexamination.
- A prior panel held HemCon had intervening rights during reexamination, affecting damages and injunctions, which the en banc court later vacated in part.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| How should 'biocompatible' be construed? | Marine Polymer argues for the district court's narrow construction (no detectable reactivity). | HemCon contends for a broader construction aligning with the specification and passing dependent claims. | Court sustains the district court's construction. |
| Did HemCon infringe the asserted claims under the correct claim construction? | Infringement is shown for claims 6, 7, 10-12, 17, 20 under the construction. | HemCon argues noninfringement under the construed scope. | Infringement affirmed for the asserted claims. |
| Are intervening rights available after reexamination for the asserted claims? | HemCon should receive intervening rights because scope changed during reexamination. | Intervening rights do not apply unless claims were amended or new. | Intervening rights do not apply; affirmed. |
| Was the damages award supported by substantial evidence or improperly calculated using the entire market value? | Marine Polymer's expert supported a 26-34% range, about $29.4M. | HemCon's expert proposed 2-4%; entire market value is inappropriate or insufficiently justified. | Damages affirmed with substantial evidence. |
Key Cases Cited
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed.Cir. 2005) (guidance on intrinsic claim construction and specification/helpful for claim terms)
- Laitram Corp. v. NEC Corp., 163 F.3d 1342 (Fed.Cir. 1998) (substantive changes and intervening rights analysis after reexamination)
- Netcraft Corp. v. eBay, Inc., 549 F.3d 1394 (Fed.Cir. 2008) (limits on patent damages and relation to the claim scope)
- Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295 (Fed.Cir. 2007) (principles on claim construction and specification references)
- Sontag Chain Stores Co. v. Nat'l Nut Co., 310 U.S. 281 (Supreme Court 1940) (early intervening rights/availability to continue use after reissue)
- Battin v. Taggert, 58 U.S. 74 (Supreme Court 1854) (illustrates that specification changes can enlarge scope and affect validity)
- American Piledriving Equip., Inc. v. Geoquip, Inc., 637 F.3d 1324 (Fed.Cir. 2011) (prosecution history can affect claim meaning post-issuance)