R + L Carriers, Inc. v. Qualcomm, Inc.
801 F.3d 1346
| Fed. Cir. | 2015Background
- R+L sued Qualcomm for infringement of U.S. Patent No. 6,401,078 (the ’078 patent), which claims a method of scanning bills of lading and transmitting data to prepare loading manifests while trailers are en route.
- During litigation R+L requested ex parte reexamination of the ’078 patent; the PTO rejected the original claim but later allowed an amended claim (adding language including an “advance loading manifest document for another transporting vehicle”).
- The reexamination certificate issued on March 21, 2014, replacing original claim 1 with amended claim 1.
- The district court concluded the amended claim was substantively narrower than the original claim (in particular by excluding manifests for the current vehicle), which under 35 U.S.C. § 252/§ 307(b) limits pre-certificate damages to situations where claims are "substantially identical."
- Qualcomm had disposed of the allegedly infringing business before the reexamination certificate issued; R+L conceded it could not recover pre-certificate damages if the claim narrowing was substantive and therefore stipulated to dismissal; R+L appealed the court’s conclusion about substantive narrowing.
Issues
| Issue | Plaintiff's Argument (R+L) | Defendant's Argument (Qualcomm) | Held |
|---|---|---|---|
| Whether the amended claim is "substantially identical" to the original claim for intervening-rights/damages purposes | The term “loading manifest” in original claim 1 always meant computer-generated/assisted manifests; the amendment merely clarified the manifest is for another vehicle and did not narrow scope | The addition of “advance” (and related amendments) limited the claim to computer-generated manifests to overcome prior art, thus substantively narrowing the claim | Amended claim 1 is not substantially identical to original claim 1; limitation to an "advance loading manifest for another transporting vehicle" narrowed scope by excluding manifests prepared for the current vehicle |
| Proper standard of review for claim-scope comparison | N/A (issue concerns claim construction standard) | N/A | Subsidiary factual findings reviewed for clear error; ultimate scope determination reviewed de novo (Teva applies) |
| Relevance of examiner’s reasons for allowance to scope determination | The patentee’s intent or stated reason for adding language (e.g., clarify only) should control scope | Examiner’s allowance showing the added limitation distinguished prior art indicates the amended scope excludes earlier-covered processes | Court treats examiner’s allowance and prosecution history as relevant evidence of narrowed scope; purpose of amendment is irrelevant to the legal inquiry but statements can show what was given up |
Key Cases Cited
- Laitram Corp. v. NEC Corp., 163 F.3d 1342 (Fed. Cir. 1998) (scope comparison for reexamined claims—interpretation of "substantially identical")
- Bloom Eng’g Co. v. N. Am. Mfg. Co., 129 F.3d 1247 (Fed. Cir. 1997) (amendments must be examined for substantive change; identical means at most without substantive change)
- Predicate Logic, Inc. v. Distributive Software, Inc., 544 F.3d 1298 (Fed. Cir. 2008) (ask whether any conceivable process would infringe original but not amended claim)
- Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015) (subsidiary factual findings in claim construction reviewed for clear error)
- Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc) (claim construction is for the court)