Marine Polymer Technologies, Inc. v. Hemcon, Inc.

specifica cluding relied on the a determination to whether the court first In patent. particular, Design products the '545 New that Revolution in- tion of speci to the statement pointed court during pendency troduced of the Revo- auxiliary the arms of the fication lution California Action were included supported on “engaged are with and frame scope litigation, within the of that primary of the frame so upper portion” principles estoppel whether of collateral auxiliary “stably frame will be any limiting Aspex’s effect of primary spectacle frame supported on the proceed patent against under the '545 auxiliary spectacle prevent and so as to the defendants. If the court determines ... moving frame from downward from Aspex’s against action one or more of primary specta from the being disengaged barred, the defendants is not the court will patent, cle frame.” '545 col. line required the issue of in- determine id., 2; col. ll. col. line see also 49-56. fringement based on the construction of passage specification pro That from critical terms of the two claims at issue support vides substantial the district in this case. interpretation disputed court’s of the Aspex’s allegations infringe- of induced language. against ment Zelman and Nike stem from The district court also relied on this alleged Revolution’s and Marchon’s direct opinion addressing in its court’s statement infringement, respectively. Given our Actions, in the California which this court holding reversing above the district court’s referred to the invention as one in which grant of summary judgment in favor of auxiliary top-mount- “an frame ... can be Marchon, Revolution and the district primary ed onto the frame to address grant summary court’s in fa- judgment Moreover, support’ ‘stable issue.” this vor of Zelman Nike is likewise re- with the district court in that agreed versed the proceedings against those case the inventor had “disclaimed an defendants are included within the auxiliary stably frame that sup- is not of the remand. ported top-mounting configuration.” party Each shall bear its own costs for Eyewear, Revolution at In 1368. appeal. light of the description of the invention in REVERSED AND REMANDED specifi- cation, decision, previous and this court’s agree

we with the district court’s construc-

tion of the limitation that recites “said pair magnetic

arms and said members

adapted to respective extend across side portions primary spectacle frame.” MARINE POLYMER TECHNOLO- GIES, INC., Plaintiff-Appellee, V sum, we reverse district court’s HEMCON, INC., Defendant-Appellant. grant summary judgment judica- on res grounds ta to Revolution and Marchon No. 2010-1548. products were at Appeals, United States Court of issue in the California Actions and were Federal Circuit. not covered the Marchon settlement March agreement, particular Design New products sold Revolution and Marchon. proceedings,

We remand for further in- Poissant, Day,

Brian M. Jones of New York, NY, plaintiff-appellee for on rehear- ing en banc. With him on the brief were Baher, Lynda Q. Nguyen Julie M. Ognian V. Shentov. Of counsel was Greg- Castanias, ory Washington, A. DC. Kurz, Raymond A. Hogan Lovells U.S. LLP, DC, of Washington, for defendant- appellant on rehearing en banc. With him on the brief were Celine Jimenez Crowson O’Doherty. and Keith B. Gollin, LLP, A.

Michael Venable DC, Washington, for amicus curiae Bio- technology Industry Organization on re- hearing en banc. With him on the brief Coston, Saad, were D. William Martin L. Meaghan H. Kent and M. Koenig- Fabian bauer. Weil, Reines, R.

Edward Gotshal & LLP, Shores, CA, Manges, of Redwood for Company, amici curiae HewlettPackard et rehearing al. on en him banc. With on the Nathan brief was Greenblatt. LLP, Phillips, Matthew C. Stoel Rives Portland, OR, for amicus curiae Intellectu- LLC, Management al Ventures on rehear- ing en banc. him on With the brief were Nathan Rai- C. Brunette Matthew C. ney, Management, Intellectual Ventures LLC, Bellevue, Washington. Stockwell, Kilpatrick Mitchell G. Town- LLP, Atlanta, GA, send & Stockton for Voda, M.D., curiae K. on amicus Jan re- hearing en banc. (“Panel (Fed.Cir.2011) Sterne, Sterne, Kessler, Opinion”), Gold- Robert G. — vacated, P.L.L.C., DC, Fox, -, Washington, FedAppx.

stein & WL (Fed.Cir. LLC, 2012). curiae Soverain Software Upon for amici Jan. re- al., him rehearing banc, en banc. With on et consideration en we affirm judg- E. Wright. was Jon brief ment of the district equally court. Although divided the district court Moore, Latham & Watkins Matthew J. did not have the reexamination before it or DC, LLP, Washington, for amici curiae decide effect of that issue on its deci- him Corporation, et al. With on the Geico sion, we also argu- consider HemCon’s Holloway M. and Adam brief were Julie ments with to the reexamination M. Greenfield. majority and a of this court concludes as RADER, Judge, Before Chief ground an alternative affirmance NEWMAN, LOURIE, BRYSON, apply do not to claims GAJARSA,1 LINN, DYK, PROST, that have not been amended and are not REYNA, WALLACH, Circuit new. Judges.2 Background Opinion part for the court in filed Polymer patent, Marine owns the '245 LOURIE, in Judge Circuit which Chief which discloses and claims preparations of Judge Judges RADER and Circuit poly-p-l->4-N-acetylglucosamine (“p- NEWMAN, BRYSON, join and PROST in GlcNAc”), a naturally occurring polysac- full, Judge and in which Circuit LINN polymer produced by charide organisms joins part in II. arthropods, fungi, such as microalgae. DYK, Judge Opinion filed Circuit p-GlcNAc Purified in utility has various dissenting part, in which Judges Circuit industrial, pharmaceutical, and bio-medical GAJARSA, REYNA, join and WALLACH applications. example, p-GlcNAc For pro- full, and in which Judge Circuit LINN (i.e., motes hemostasis stoppage of bleed- joins parts I—II. ing hemorrhage) and is therefore useful in trauma treating units for serious LOURIE, Judge. Circuit wounds. HemCon, Defendant-Appellant Inc. patent The '245

(“HemCon”) places particular em appeals judgment from a phasis on “biocompatible” compositions of the United States District Court for the context, p-GlcNAc. In biocompatibili District of New Hampshire holding that ty compound’s relates to a biological reac 6,864,245 infringed U.S. Patent (“the tivity or tendency to elicit deleterious re patent”) assigned '245 to Plaintiff- e.g., necrosis, edema, erythema, Appellee Polymer Marine Technologies, actions — (“Marine cellular degeneration-upon exposure Inc. Polymer”). liv September On E.g., ing cells or panel patent a tissues. of this court reversed the ll.36-38, decision, col.42 col.44 ll.15-16. concluding specifi district court’s cation describes four acquired intervening rights HemCon had tests that can be patent the '245 used to biocompatibility based on actions taken assess the of a test, Polymer during parallel Marine substance: implantation reex- an elution an Polymer test, proceeding. test, amination an injection intracutaneous Techs., HemCon, Inc., Inc. systemic injection Id. test. col.42 ll.1-3. Judge 1. Circuit Judges GAJARSA assumed senior sta- 2. Circuit MOORE and O’MALLEY did July tus on participate in the decision. The '245 issued with expos- elution test involves The disclosed “biocompatible” compo- to create recite to solution all of which ing a test substance cells to extract, majority cultured test A exposing p-GlcNAc. those sitions extract, observing the cells and then “biocompatible” limitation claims recite id. col.42 cytotoxicity. See signs for Independent repre- claim 6 is generically. im- implantation test involves 11.6-62.The sentative: the test substance sample

planting biocompatible poly-(3-l->4-N-acetyl- A scoring tissue and animal’s muscle into an comprising up to about glucosamine reactions. severity any adverse local 150,000 N-acetylglucosamine monosac- intracu- 1.64.The id. col.42 1.64—col.43 See covalently p-l->4 attached in a charides preparing calls for injection test taneous a molecular having conformation and substance, injecting of the test an extract million weight upof to about 30 daltons the extract into the skin volumes of small N-acetylglucosa- at least one which animal, monitoring injection of an deacety- has mine monosaccharide been 1.65— reactivity. See id. col.43 for sites lated. injec- Finally, systemic in the col.44 1.56. In Id. col.72 11.5-10 test, weight animals are monitored addition, the '245 contains several toxicity signs overt changes and other specific claims that recite dependent intraperito- receiving intravenous after example, the elution test. For scores on extract. injections of a test substance neal biocompatible poly- claim 12 claims: “The 1.42. 1.57—col.45 See id. col.44 p-l->4-N-acetylglucosamine any one of biocompatibility these describing which has an elution test score claims 6-11 tests, indicates that their the specification added). 0.” Id. col.72 11.33-35 given if a test sub- are met requirements specify and 20 also zero scores on Claims 3 slight no more than mild stance shows 4, 5, 13, test; analogous claims the elution on the reactivity. example, For scores require and elution test scores to four on a range test from zero elution col.72 E.g., one or two. id. 11.33-41. reactivity, where zero biological scale of Polymer sued HemCon March Marine reactivity, represents no one represents infringed that alleging HemCon reactivity, represents mild reac- slight two Mark- During subsequent '245 patent. moder- represent three or four tivity, and Polymer argued Marine proceedings, man and a reactivity, respectively, ate severe “biocompatible” p-GlcNAc that should “if satisfy the elution test substance can “biomedically [p- pure construed to mean treated with the test none of the cultures reproducibly accept- that exhibits GlcNAc] than reactivi- greater mild article show bioreactivity, as ably low levels of adverse regard But with ty.” Id. col.42 11.41-62. by biocompatibility tests.” determined compositions, the p-GlcNAc the claimed Techs., HemCon, Inc. v. Polymer Marine p- “the also states specification Inc., 06-CV-100, 1995454,at 2008 WL No. the invention exhibits no detect- GlcNAc of (D.N.H. 2008). 6,May coun- *1 HemCon reactivity, assayed by biological as able “biocompatible” should be read tered that tests, implantation intramuscular elution limiting p-GlcNAc the claims to rabbits, rabbits, injection in intracutaneous microal- plant “harvested from had been injections in mice.” Id. col.41 systemic alternative, or, be inter- in the should 1.3; gae,” 1.44—col.49 see also col.45 1.66—col.42 for broadly to mean “suited preted test results (reporting biocompatibility 1.66 at *1-2. applications.” Id. reactivity on biomedical showing zero p-GlcNAc for considered, test). and ulti- The district each pro- each of amination of the mately rejected, parties’ patent '245 the United reviewing the posed after Patent constructions States and Trademark Office (“PTO”). language, de- patent’s '245 written reexamination HemCon’s re- history. In- scription, prosecution quest prior cited ten art references —all of stead, court concluded that which, HemCon, according to raised sub- p-GlcNAc, “biocompatible” as claimed questions new of patentability stantial for p-GlcNAc “with means low patent, '245 patent given the '245 the construction of variability, purity, and no detectable high “biocompatible” adopted by the district reactivity as determined bio- biological J.A. In response, court. 40740-41. compatibility tests.” Id. at *10. granted PTO HemCon’s reexamination re- quest, initiated reexamination proceedings, Polymer

Marine then moved sum- and issued non-final office action April on literally in- mary judgment HemCon action, 2010.3 this first office 6, 7, 10-12, 17, fringed and 20 of adopted examiner a construction of “bio- patent. Applying the '245 its claim con- from compatible” different the district struction, granted the district court Ma- court’s, concluding that under its broadest Polymer’s rine motion and that Hem- held interpretation, reasonable the term meant infringed Con all had seven asserted variability, high purity, “low and little or trial jury claims. A followed to determine (em- reactivity.” no detectable J.A. 39503 validity damages. jury The made fac- phasis Noting dependent tual findings relating to obviousness and 4, 5, 13, 14, 21, that the '245 was determined required test anticipated elution scores of prior the cited art. With one or two damages, jury (corresponding slight found that or mild reactivity Polymer on that entitled to reason- test defined $29,410,246. royalty jury specification), able explained After examiner verdict, filed for judg- motions the district court’s requiring construction (“JMOL”) ment as a matter of law on “no detectable biological reactivity” con- anticipation, jury’s findings factual flicted those while his inter- obviousness, relating to challenging pretation inconsistency. avoided such damages the supported by award as not all rejected examiner then of the substantial evidence. The district court 22 claims as invalid under his broader denied each of motions and made a in light construction of cited prior art. further legal determination that the as- doing, In primarily so he relied on three serted were not claims obvious under 35 art prior references —a scientific article § U.S.C. 103. district court entered a (Sandford) (Peniston patents and two permanent 16, injunction on September Malette) finding that each reference ex- — 2010, barring HemCon from further in- plicitly all nearly disclosed of the limita- claims, fringement of the asserted and is- of every tions claim. With sued judgment its final on September limitation, “biocompatible” the examiner 2010. appealed the decision to explained any difference between the this court. biocompatibility claimed and that disclosed Sandford, Peniston, In August infringement and Malette while the litigation court, was still before the “minor” would have been district obvious to a request ordinary HemCon filed a for reex- parte person ex skill the art at the 90/009,555. parte 3. Ex reexamination of the '245 No. was conducted under Control Reexamination 39507; judgment infringement also court’s and va invention. J.A. see time of the injunction damages cated the and the grounds award on HemCon had ac Polymer addressed response, Marine quired during reexami noted dependency improper “the patent. Opinion, nation the '245 Panel by cancelling all six claims Examiner” Polymer pe at 1090-95. Marine scores of one or recited elution test had (ie., rehearing, titioned for en banc and on required at expressly claims that two January 20, reactivity), leaving granted each the full court some while least 1-3, 6-12, remaining and 15- Polymer’s petition rehearing claims Marine for Having deleted inconsis- 20 unaltered. judgment panel. vacated of the Polymer argued that Marine Techs., HemCon, tent Marine Polymer Inc. v. — interpretation [district court’s] “the Inc., No.2010-1548, -, Fed.Appx. adopted ‘biocompatible’ should term (Fed.Cir. 2012). 2012 WL 255331 Jan. in view of various con- this reexamination” below, For the described we now reasons teachings specification. within sistent judgment affirm court. district conflicting With all J.A. 37688-90. cancelled, “agree[d] the examiner with the Discussion term court’s construction [district] I. specifi- as from the biocompatible derived patent.” the ... J.A. 39481. cation of The District Court’s Decision Furthermore, withdrew all examiner A. Jurisdiction Standards of Review rejections view of that narrower con- jurisdiction We have to entertain remaining and confirmed struction 1295(a)(1). appeal § under 28 U.S.C. patentable. Id. address claim construction a matter We did notice of its provide The PTO law, we review which without formal certificate intent to issue reexamination appeal, although give deference on we re 3, 2010, the '245 until November spect judgments of the district the district had final after court entered Techs., Inc., Cybor Corp. courts. FAS Polymer’s judgment infringe- (Fed.Cir.1998) (en timely appealed ment action. HemCon banc). grants summary We review judgment, from the district court’s and on novo, judgment reapplying de the same panel November a motions of this applied by standard court un granted stay damages award 56(a). der Federal Rule of Civil Procedure pending permanent injunction appeal. Seis., Bio-Engi Iovate Health Inc. v. 29, 2011, the PTO On March issued Nutrition, Inc., (“'245 neered & 586 Supplements final reexamination certificate Reex- (Fed.Cir.2009). Cert.”), 1376, dependent re which cancelled F.3d 1380 Our am. 4, 5, 13, 14, 21, and 22 con- claims view of court’s of is a district denial JMOL 1-3, patentability law, firmed the of claims 6- governed by regional circuit Union 12, in and 15-20 accordance with exam- Corp. v. Carbide Chems. & Plastics Tech. Cert, iner’s decision. '245 Reexam. col.2 (Fed.Cir. Co., 1366,1372 Shell Oil 425 F.3d 2005), First a dis and the Circuit reviews 11.1-6. novo, trict of As court’s denial JMOL de argu- this oral panel A court heard tro-Med, Am., Inc., Inc. v. Nihon Kohden appeal from the dis- ments HemCon’s (1st Cir.2009). 1, In such 591 F.3d 13 7, 2011, judgment trict court’s on June situations, jury’s upheld “a must be verdict September a decision on issued inferences, majority reversed the district unless the facts and viewed which 1358 verdict, nary most favorable skill in the art at the light time of the strongly overwhelmingly

point so Phillips Corp., invention. v. AWH 415 jury that reasonable (Fed.Cir.2005) (en favor of the movant 1303, F.3d 1312-13 could reached the verdict.” Id. banc) not have (quoting Corp. Concep- Vitronics Roman-Abreu, Borges Colon v. (quoting (Fed.Cir. tronic, Inc., 90 F.3d 1582 (1st Cir.2006)). In 438 F.3d review- 1996) (“we look to the words of the claims ing a court’s denial of JMOL on ... themselves to define the of the damages, the First Circuit reverses invention”)). patented widely Faced with could persons where “reasonable not have varying proposed par- definitions from the jury reached the conclusion that the em- ties, the district court did find that Sys. Corp. braced.” v. Unisys Visible “biocompatible” ordinary had a plain and (1st Cir.2008) Corp., (quot- 551 F.3d meaning to one in the skilled art. The ing Maytag Corp., LLC v. Attrezzi properly district court looked first to the (1st Cir.2006)). Statutory in- claims of the '245 and determined terpretation is matter law that we ” they that “do not ‘biocompatible.’ define consider de novo. Aristocrat Techs. Austl. Polymer, 2008 WL at *3. Tech., Pty Int’l Ltd. v. Game Although dependent several of (Fed.Cir.2008). specify “biocompatible” p- may GlcNAc reactivity exhibit mild in an

B. Claim Construction (i.e., elution test “an elution test score argues that the district court’s 2”), 1” or “an elution test score of “biocompatible” construction to mean majority of the claims use the term “bio- variability, high purity, “low and no detect- compatible” generically, any without refer- able biological reactivity as determined biocompatibility ence to a test score. Be- biocompatibility tests” was erroneous and cause “biocompatible” the term admits of warrants judgment. reversal no limitation based on the context of the supporting assertion, HemCon relies properly the district court turned primarily presence on the depen- six teachings of the specification. dent reexamination) (eventually cancelled in specification teaches that the p required elution test scores of one or GlcNAc high “of invention” has “a two, as passages as well in the written degree biocompatibility” and directs the description characterizing certain biocom- reader portion specification to a patibility as being despite tests satisfied high “demonstrates the biocompatibility bioreactivity. detectable HemCon there- the p-GlcNAc of the pat invention.” '245 fore proposes broader alternative con- Further, ent col.10 ll.49-62. the cited mate struction, “suitable for applica- biomedical provides rial empirical showing results test tions,” argues it align would better p-GlcNAc of the invention exhibit teachings with the in the specification and ed reactivity zero on each disclosed bio- render the asserted claims invalid. test, ll.45-50, compatibility id. col.45 col.46 66-67, 11.26-29, ll.10-11 and col.49 disagree. We The district court’s summarizes the results as follows: is “[I]t interpretation of “biocompatible” sup p-GlcNAc demonstrated that the of the ported by evidence, intrinsic and we invention biological therefore exhibits no detectable uphold that construction. Our tests, claim analysis begins reactivity, assayed by as in construction elution the itself, rabbits, implantation of the claim as it would tramuscular in intra rabbits, by injection been understood a person system- of ordi- cutaneous and

1359 un- biocompatibility mice.” on the disclosed tests ic Id. col.411.66-col.42 injections Thus, specification supports the In “Materials and persuasive. describing 1.3. the See, claim biocompa- district court’s construction. for the four disclosed Methods” Inc., Corp. tests, v. 549 F.3d e.g., eBay, tibility the indicates specification Netcraft (Fed.Cir.2008) (“[T]he 1394, common 1398 that, may example, test substances repeated phrase the specification’s use of biocompatibility test if none “meet[] the inven- present ‘the invention’ describes greater reactivity.” ... show a than mild ”); Servs. tion as a whole.... Verizon lan- col.42 11.42-44.But such Holdings 503 F.3d Vonage Corp., v. Corp. appears only generalized descrip- guage (Fed.Cir.2007) (“When 1308 methods; test read as tions of these when ‘present the features of the thus describes whole, specification makes clear that whole, lim- description as a invention’ outperforms p-GlcNAc invention invention.”); Honey- its “no detecta- baseline standards and shows Inc., Int’l, Indus., ITT 452 Inc. v. well by biological reactivity ble as determined (Fed.Cir.2006) (limiting F.3d biocompatibility tests.” district written to a fuel filter where “the claims “biocompatible” court’s construction of ‘this refers to fuel filter as description variability, meaning p-GlcNAc “with low ”).4 present or ‘the invention’ invention’ no high purity, biological and detectable arguments highlighting reactivity by biocompatibili- as determined HemCon’s district inconsistency by equal- between the is therefore an ty tests” affirmed requir and construction the claims court’s ly divided court.5 scores, while not ing elution test non-zero Infringement C.

baseless, essentially amount to a conflict teachings specification between Following its decision on claim construc- As of claim differentiation. doctrine tion, summary ruled held, is “not we have claim differentiation judgment infringed that HemCon rule overcome and fast and will be hard 7, 10-12, 17, patent. and 20 of the '245 by contrary construction dictated appeal, noninfringement HemCon’s On history.” prosecution description written 10,11, challenge regarding Inc., Int’l, C-COR, Inc. v. Seachange entirely on claim con- hinges its failed (Fed.Cir.2005); 1361, 1369 see also arguments, HemCon does struction Inc., Rexnord, v. 939 F.2d Corp. Laitram dispute infringement not otherwise (Fed.Cir.1991) (“Claim differen claims. With to claims 12 regard these rule.”). not a guide, rigid tiation is a Such additional de- HemCon raises an description appears specification fense, arguing the district court here, indicated above. lit- lacked sufficient establish evidence infringement prod- eral because HemCon’s also find focus on We HemCon’s cannot test- “passing” allegedly undergo scores ucts elution possibility nonzero only Judge Dyk's opinion argues others. there is one the details sion of fact example p-GlcNAc speci- of the claimed in the construction based on the assertion that claim fication; pro- "examples” rest of party argued the the cited construction arrived neither purifying, methods character- vide various court. not bound at the district We are however, using product. izing, parties, disclosed arguments the district Exxon Chem. neither was court. that, Patents, Corp., a basis for Inc. 5. We also note while not our Lubrizol Moreover, affirmance, (Fed.Cir.1995). Judge Dyk same con- the PTO arrived at the interpreting par- suggests deciding upon we are construc- the term in its clusion proceeding. example, on one to the exclu- allel reexamination tion based However, required by infringing those claims. ing products, including HemCon’s argument by that pertaining importance has waived HemCon “evidence opposing summary it in failing to raise biocompatible p-GlcNAc in HemCon’s judgment, and we need not con- therefore products significance and its for market USA, v. it here. Pandrol LP Air- sider Techs., Polymer demand.” Marine Inc. v. Prods., Inc., 320 1366- Ry. boss F.3d HemCon, Inc., 06-CV-100, No. 2010 WL (Fed.Cir.2003). Accordingly, affirm we (D.N.H. 2010). at *4 Aug. in- judgment regarding the district court’s jury Ultimately, the entitled to eval- 10-12, fringement conflicting uate this evidence credit equally by20 divided court. testimony the Polymer’s expert of Marine HemCon, over that of jury as it did. The Damages D. testimony also heard from witnesses for Finally, HemCon seeks overturn the parties, including both HemCon’s own $29,410,246 jury’s damages award president, describing p- the claimed supported by and not sub- unreasonable GlcNAc as “critical” to the core hemostatic evidence. ar- Specifically, stantial HemCon sum, function of the accused In products. gues Polymer’s expert that Marine lacked record, based on jury’s the evidence of testimony sufficient basis for his on what damages supported award was substan- royalty would constitute a reasonable rate cases, may tial evidence. In such we jury improperly and that the on the relied “substitute choice that of [our] market its damages entire value for calcu- jury.” Corp. v. Brooktree Advanced Micro trial, During parties lation. present- both Devices, Inc., (Fed. ed expert testimony damages. on Marine Cir.1992). damages The award is there- Polymer’s expert that, testified on based fore affirmed an equally divided court. case, his evaluation of the a reasonable royalty range would from about 26-34% II. sales, infringing HemCon’s and he settled Intervening Rights 30%, $29,410,246, as the appropriate contrast, In expert award. HemCon’s tes- addition, argues HemCon 2-4% infringing rep- tified that of all sales asserted patent changed claims of range, concluding resented correct reexamination, during HemCon Polymer’s royalties reasonable thereby acquired intervening rights $2,767,589. would total those district court’s find- ing of infringement should therefore be

Both experts used the total reversed. support To products sales of the containing accused defense, asserts infringing biocompatible p-GleNAc as interpretation district court’s of “biocom- royalty base. The use of the entire patible” incorrectly narrowed term market value as royalty is ac base requiring “no detectable biological reactivi- ceptable to the extent ty.” HemCon, According to the district proves owner that “the patent-related fea court’s construction conflicts not with ture is the basis for customer demand.” Techs., description, statements in written Inc., but Lucent Inc. Gateway, (Fed.Cir.2009) (internal presence dependent also omitted). quotations reciting elution test scores of one or two— district court correctly permit slight found that claims that or mild reactivity record contains substantial support damages evidence to were in version of the '245 award based on the entire market value of was before the district court.

1361 reactivity” signs at “no of cellular on that “biocompatible,” contends HemCon 11.39-40). patent represented test, '245 as '245 col.42 least HemCon reexamination, therefore must before 12 speci- claims 20 argues while and low, non-zero levels bior- encompassed reactivity prior no on the fied elution test proper construction eactivity, so that reexamination, they cov- to nevertheless necessarily than time was broader at that exhibiting slight reactivity products ered interpretation. district court’s tests Ma- biocompatibility on other until that, Next, by cancel- argues successfully pressed Polymer HemCon rine 4, 5, 13, 14, 21, and dependent claims ling biological restrictive “no detectable more adopt to persuading 22 the examiner and reactivity” during construction reexamina- of “biocom- court’s construction the district tion.6 reexamination, Marine during patible” Polymer disagrees argues Marine and change Polymer effected a substantive intervening rights cannot with apply remaining claim—essen- scope each to that have been respect claims reactivity in the tially, allowing from some introduced newly amended or in the reex- permitting to “no issued claims originally proceeding.7 amination reactivity” after reex- biological detectable Citing our decision Laitram amination. of intervening doctrine Corp., v. NEC 163 F.3d 1346- Corp. courts rights developed recognized first (Fed.Cir.1998), argues HemCon 47 permitting changes substantive to the in deter- key intervening lies scope through claims post-issu mining scope “whether the the reexam- procedures “the door ... open ance left from the ined differs injustice” gross party, where third Defendant-Ap- Corrected Br. for claims.” make, already use, having begun to or sell at 2010 WL 5650491. HemCon pellant article, given previously lawful finds perceived “sub- thus concludes that newly infringing activities rendered under change” surviving stantive patent. modified See Sontag Chain patent during trig- reexamination Co., Nut Stores Co. Nat’l 310 U.S. respect gered (1940). 293-95, 961, L.Ed. 60 S.Ct. view, sub- those claims. Under HemCon’s situations, the “acquired In such defendant change especially to claims applies stantive right continue at least to use which, 10, 11, reciting no and if it held a therefor license [articles] any biocompatibility result numerical 294-95, patent.” under the reissued Id. at test, generic respect. are in that Further- (quoting Ashland Brick 60 S.Ct. Fire more, argues that even claims Co., Co. v. Gen. Refractories substantially changed 20 were (6th Cir.1928)). With to reis adopted the examiner the district when concept of patents, intervening sued “biocompatible” construction of court’s rights was codified the Patent Act of reexamination, despite during the fact that provides statute for two required claims have at all times those (1) (corresponding types intervening rights: test of zero elution score supported by Polymer’s position supported by position amici is 6. HemCon’s Voda; Co., curiae Jan K. Intellectual Ven- amici curiae Hewlett-Packard Broadcom LLC; Management Biotechnology tures Inc., Dell, Inc., eBay, Corp., Systems, Cisco Industry Re- Association and Pharmaceutical Inc., Inc., Inc., Facebook, Google SAP America; search and Manufacturers Sover- America, Inc.; Corp., GEICO FedEx Tessera, Inc.; ain Software LLC and and Sea- Corp., Macy's, Inc. ly Corp. liability posed claim, for rights abrogate infringing that amended or new or who from the origi- preparation added to modified made substantial for or same, products prior if the accused were patent nal to issuance of a certificate reissue, (a) or often provisions made used before of under subsection of intervening rights; referred to as absolute this section. (2) intervening rights apply that 307(b) added).8 § U.S.C. to judicial mitigate discretion matter Thus, after a patent emerges from reex- liability infringing for such claims even as amination, the statute makes available ab- products

to made used after reissue equitable rights solute intervening infringer if made substantial the accused the same extent provided the reissue preparations infringing for activities statute, but to “amended reissue, equi- often to as prior referred patent. or new” claims in the reexamined intervening rights. table See U.S.C. (2006). rights § Intervening do not regard intervening With to HemCon’s accrue, however, prod- where the accused rights argument, we must first note that activity infringes uct claim exist- the reexamination of the '245 patent was remains patent ed in the separate and distinct proceeding change” “without after substantive reissue. not properly appeal. before us It did Crating Seattle Box Co. Indus. & Pack- trial, not conclude until after so the district Inc., (Fed.Cir. ing, 827-28 consider, court did nor it could 1984). considered, the reexamination in rendering judgment. its panel noted that Although intervening rights issue after arose originated against patents as a defense judgment, but concluded that through procedures, modified reissue it had the discretion to consider that issue doctrine has since been extended on appeal because it was an event as to patent context of reexamination. Pursu judicial which appropriate. notice is Exer- 307(b) 316(b), §§ ant to 35 U.S.C. discretion, that, cising panel held respectively, parte both ex and inter in light reversal the district court’s partes reexaminations can give rise to in construction, HemCon is entitled to 307(b) tervening rights. § For example, intervening rights and that the district provides as follows: judgment infringement court’s therefore Any proposed amended or new claim must be reversed. patentable

determined to be and incor- Although reject premise we porated patent following into a a reex- argument regarding amination HemCon’s interven proceeding will have the same ing rights effect as the district court’s claim specified section 252 of —that prior patents this title for reissued construction on the reexamination made, right conclude, any person pur- who was erroneous —we chased, decision, ground or used within the as an United alternative States, or imported into the United even if the district court’s claim construc States, patented by anything erroneous, such pro- intervening HemCoris 316(b), intervening governing essentially Section language. contains identical reexamination, partes available after inter contrast, it disre- asserted here must fail because rights argument were unambiguous against lan- neither “new” nor plain gards 10-12, 17, 307(b). 307(b) and 20 “amended”—claims governs §of Section guage contained before and identical rights arising parte from ex reexamination. patent after col.72 and that specifies reexamination 50-54, 11.5-16,25-35, 60-61; '245 Reexam. incorporated new” claims “amended or Cert, col.2 11.1-5.Whether or not Marine patent during reexamination “will into a to Polymer’s arguments the examiner and in specified that have the same effect as claims during cancellation of reexamina- ie., 252,” to susceptible will be section may the remaining have affected ignores this rights. HemCon intervening scope, they not claims’ effective did statutory requirement and asks threshold intervening for “amend” those claims subsidiary directly proceed that we “new,” rights purposes or make them change” analysis, de- “substantive which statutory language which is what the re- § from 252. See Co. rives Kaufman Intervening are quires. rights therefore (Fed. Lantech, Inc., 807 F.2d 975-77 307(b) § unavailable under as a matter of Cir.1986) be- (explaining relationship the law. 307(b) §§ that holding and and tween

“identical,” § used in “with- means sidesteps by empha- issue But under change”). substantive out well-recognized sizing principle the 307(b), assessing question first when § the can arguments during prosecution made intervening from whether arose meaning affect the ultimate of a claim the reexamination is whether asserted “scope” term —and thus the claim— new”; if is the answer claim “amended returning then to its contention that and no, Only the if the inquiry. that ends is intervening rights turn on whether claim new has been claim at issue is amended scope changes during reexamination. proceed step may the second Poly- posits HemCon thus that Marine analysis the substantive in assess in rendered mer’s actions reexamination any change pursuant such effectively effect of claims “amended” asserted estoppel, though § disavowal or even formally the claims was is framework consistent Such changed. disagree. We There, holding our in our Laitram. it are properly true that claims While had focus rested on whether claims interpreted arguments account for substantively changed precisely be been during prosecution, concessions made changed cause been the claims had —there conclusion the claims as- HemCon’s no at issue question purposes for serted here were “amended” reexamination, so had been amended in 307(b) general par- § too far. In goes step dispute centered on second lance, means alter ... formal- “amend” “to viz., rights analysis, wheth intervening rephrasing.” ly by adding, deleting, or those to the claim er literal amendments 42- Heritage CollegeDictionary American changes language had effected substantive (3d 1997). if term ed. And even Laitram, at scope. in claim See alone, standing any ambiguous were (“The parties dispute whether are resolved its context within doubts original claims was substan § 307. tively following several amend changed 307(a) three identifies during reexamination Section ments made pat- categories ... of claims a reexamined patent.”) (emphasis n (1) original simply opt rely arguments ent: existed would patent unpat- but have been cancelled as rather than to effectively amendments (2) entable, origi- in the claims that existed change, thereby preserve, otherwise confirmed nal and have been during invalid claims reexamination with- (3) patentable, amended or new claims engendering intervening rights against out that did not exist but Reply those claims. for Br. Defendant been to be patentable found will Appellant at 2011WL 287045. patent by incorporated into the If, highly We believe that is unlikely. In providing rights, PTO.9 reexamination, an examiner determines 307(b) § category is limited to the third particular claims are invalid and need corresponding as evidenced allowable, amendment to be one would ex- any or reference to “amended new claim” pect an examiner to require amendment “incorporated patent.” Any that is into a accept rather than argument alone. In- interpretation “amended” that includes deed, Congress may expected well have by alone, or argument disavowal disclaimer changes scope during in claim reex- HemCon, by as advocated would conflict ordinarily by amination would be made § the with rest of for it is difficult to amendment, arguments how about which would avoid the risk of envision claim mean- ing “incorporated patent” creating loophole could be into a a in the intervening by Finally, Moreover, the Director of PTO. rights it is if argument defense. clear that “amended” a term of art rejection, does suffice to overcome it is prosecution,10 patent including reexamina- probably because the claims at issue are tion in that proceedings,11and context con- Thus, not games- unallowable. the fear of changes formal sue, case we we must now decide the as patentable original- reexamination to be clarify and the law. find it sure, ly patent applicants’ To be issued. 807(b) § clause in re- Regarding the prosecution, arguments during and actions rights stricting intervening to “amended in a prosecution reexamination including heavily dissent on relies new” proper interpre- can affect the proceeding, prior While analogy to other fields law. scope tation and claims. effective their in helpful times stat- may at experience in- rejecting request But for in HemCon’s to utory interpretation, references scat- not inter- tervening rights, we are here of the permissive applications term tered Rather, interpret- we preting claims. are to, product safety e.g., regu- a “amended” intervening for ing provides statute contract, and a are of limited private lation to rights following only as reexamination in utility interpreting specific new” claims. “amended or The asserted statutory lan- before us. Clear statute the '245 are neither. claims of understanding of long prac- and the guage interpretations trump

titioners a field Conclusion Furthermore, the dis- other fields. from judgment of the Accordingly, the final amicus briefs selectively quotes from sent is district court affirmed. of the arguing interpretation for a flexible AFFIRMED statute, intervening other amici but statutory its argue giving DYK, dissenting part, Judge, Circuit Clearly, nothing conclu- meaning.

plain GAJARSA, REYNA, with whom briefs, from amicus gleaned can be sive WALLACH, full, join in Judges, Circuit we, in to on relying primarily but addition LINN, joins Judge, whom Circuit persuaded by are analysis, own more our parts I—II. reading of arguing for a faithful those statutory text. case to took this en banc The address when absolute attempt

The makes brief to dissent 307(b) § re- during support arise under U.S.C. upon Supreme Court call is view, particular, question examination. language of Court quoted but the when intervening rights accrue substantially whether specification “be patentee by- juris- limits the claim our established claim construction than argument by prudence. rather formal amend- language. ment background Some is essential to an understanding claim construction Despite importance of the issue of Polymer issue. Marine asserted seven rights, by as evidenced (“the 6,864,245 claims of Patent U.S. No. amicus filed numerous companies briefs patent”), p-GlcNAc poly directed to organizations, the court did not seek mers, against Independent HemCon. briefing further argument par- representative claim is “A claims: approach important ties. This to an issue biocompatible [p-GlcNAc polymer] com Now, my justify. is in difficult to view 150,000 prising up about N-acetylglu remarkably, having the court affirmed the covalently cosamine monosaccharides at judgment by equally district court’s |3-l->4 tached in a conformation and court, goes opine divided on to in dictum having weight up molecular of intervening rights the issue even about 30 million daltons which at (as below) though that issue discussed has least one N-acetylglucosamine monosac also, been resolved the affirmance and deaeetylated.” charide has been view, in the majority’s “is properly Pat. col.72 ll.5-10 Maj. us appeal.” Op. before at 1362. Polymer acknowledges p This is an unusual and ap- unfortunate polymers GlcNAc had been disclosed to an proach important issue. This issue prior art. polymer also exists likely to become even more important chitin, in nature in organic the chief Leahy-Smith under the new In- America component structural in the cell walls of (“ALA”) vents Act of because the increased fungi or algae protective and the shells availability majori- of reexamination. The crustaceans, of insects and but been had ty’s interpretation of the statute is both difficult to high isolate with purity and encourage incorrect and certain to improp- low variability. patent pur The '245 strategic er by patent applicants. behavior ported to disclose for the first a time I dissent. “biocompatible” polymer in a purified form, along with methods for purifi its I cation from microalgae. With sufficient purity, polymers these have a of number point The starting for an applications, biomedical including, inter rights determination is the meaning of the alia, as a rapid means for the control of language. The district purified severe blood loss. A polymer (“bio- key construed the claim limitation provides effectiveness, “increased re compatible”) of the original toxicity duced and improved bioavailabili require “polymers ... with low variabil- ty” applications. biomedical Id. high ity, purity, and no biologi- detectable ll.3-4. col.5 reactivity cal by biocompa- as determined tibility Techs., tests.” Polymer Marine questions There are substantial as to HemCon, Inc., v. 06-cv-100-JD, Inc. No. art prior whether disclosed the claimed (D.N.H. 2008 WL May at *10 invention. That in depends significant 2008) added). (emphasis Contrary part on the construction of the term “bio- Judge opinion, Lourie’s it compatible,” existing seems to me term each of that above, district court’s construction asserted As claims. noted the dis- palpably incorrect and inconsistent with “biocompatible” p- trict court construed banc), may explicitly a term “polymers limited to ... define to be GlcNAc Access, v. biological reactivity by implication, Irdeto Inc. Ech- ... detectable no biocompatibility Corp., oStar by tests.” Satellite as determined (Fed.Cir.2004). 1995454,at WL *10 Polymer, 2008 Marine added). (emphasis Here, specification defines “biocom contrary patible” directly in a manner at outset be somewhat might One of “no of this construction because it district court’s construction de skeptical biological reactivity.” specifi The by party either and was tectable proposed was not pro- concept cation first of contrary patentee’s own discusses bio- indeed court, compatibility Description In the the Detailed of posed construction. Invention, stating p-GlcNAc Polymer “biocompa- Marine conceded that “[t]he degree p-GlcNAc” biologi- high exhibit some of the invention exhibits tible could biocompatibility.” '245 Pat. col.10 reactivity, arguing cal the term should ll.49-50. “biomedically pure provide The at specification to mean does this interpreted point [p-GlcNAc] reproducibly acceptably high exhibits ac- what constitutes degree bioreactivity, biocompatibility, but it ceptably low levels adverse discloses biocompatibility “[b]iocompatability may tests.” be deter as determined Order, Poly- variety techniques, mined includ Claim Construction Techs., HemCon, Inc., ing, procedures Inc. No. 06- but not limited to such mer test, cv-100-JD, slip. implanta at WL 1995454 elution intramuscular op. (D.N.H. 2008) tion, 6,May systemic injec or intracutaneous or subjects.” Similarly, argued it its memorandum into animal Id. col.10 ll.50- four sample p-GleNAc accept- “biocompatibility “showed Each these that its detail, tests” is later ably including adverse reactions” to each described low materials, methods, particular and con biocompatibility tests con- perform test “biocompatible p-GlcNAc” properly was ditions each struction specifi- sample. specification “fully p-GleNAc the claims and also supported” of Plain- discusses the results each of the four Support cation. Memorandum tests, Construction, Polymer specifically defines what consti tiffs Claim Marine HemCoñ, Techs., Inc., “meet[ingj” requirements tutes the the Inc. v. No. 06-cv- (D.N.H. 100-JD, See Aug. particular “biocompatibility test.” id. at 10-11 2007), opinion it Judge No. col.42 31.42-43. Lourie’s ECF 48-1. specification self concedes that the contem Polymer’s or Whether not own plates “passing” non-zero on the scores binding,1 the constructions are Op. biocompatibility tests. See Lourie at contrary is in fact to court’s construction 1358-59. specification the the them- tests, specification Notably, for each of the four the selves. The and claims are “biocompatible” specification require does not that there be p-GleNAc clear that en- reactivity compasses polymers biological provides that some bio- no but that exhibit reactivity. logical specification “is the the test is satisfied where at least some meaning present. example, For single guide reactivity of a is with best test, term,” the disputed Phillips Corp., specification v. elution AWH (Fed.Cir.2005) (en “[tjhe (i.e., test p- 415 states article F.3d 1315 prohibit asserting Corp., party would a from Key v. Hercon 161 the like 1. See Pharms. Labs. (Fed.Cir.1998) position that it advocated at (Ordinarily, as 'error' a had F.3d 715 waiver, error, trial.”). estoppel, or doctrines of invited 1368 it,

GlcNAc) if from the claim biocompatibility depend meets the test doctrine of with the test presumption of the cultures treated a none differentiation creates reactivity.” greater a than mild article show is improper. such a construction See Lie- ll.41-43 Medrad, Inc., 45 Pat. col.42 v. belr-Flarsheim Co. 2 added). Likewise, specification ex (Fed.Cir.2004). adopt F.3d We biocompatibility using plains that the test term which construction renders if poly other methods is met even or it meaningless claims invalid when is biological reactivity. some mer exhibits claim “only construction that is consis- ll.25-26, ll.54-60, id. col.43 col.44 col.45 See with the claim’s tent specification Nowhere does ll.41-43. Casio, Inc., description.” v. written Rhine disclaim from disavow or (Fed.Cir.1999) (em- polymers exhibiting these levels words, phasis pre- In other reactivity. polymer exhibiting If a some can sumption be overcome where a reactivity specifica meets the nonetheless i.e., contrary construction is “dictated” — explicit requirements “biocompa tion’s compelled by description the written or — tibility,” polymer it cannot such Int’l, prosecution history. Seachange Inc. “biocompatible” meaning within C-COR, Inc., 1370- Thus, specification con the claims. (Fed.Cir.2005) (holding pre- templates of reactivity some level that is sumption established claim differentia- compatible use applica biomedical tion was rebutted because the written de- tions. scription “consistently” referred to the description biocompatibility If this in specific argu- claim term a manner and specification enough, were not prosecution ments during made amounted independent six presence of claims in the and unambiguous clear disclaimer of original patent “biocompa dictate that the Here, scope). claim is an there alternate tible” limitation allow some exhibition construction, one construing “bio- reactivity. Six dependent claims in the compatible” to mean “little no detecta- original patent specifically required that reactivity,” preserves ble which the validi- “biocompatible” p-GlcNAc have an elu ty of six dependent Nothing these claims. two, test score either one or which description prosecution in the written correspond “slight” reactivity or “mild” history presumption by overcomes the dic- respectively directly and is inconsistent tating or compelling the conclusion that requiring reactivity. with construction no exhibiting “biocompatible” is limited to “no '245 Pat. col.42 ll.50-55. If “biocompatible” detectable reactivity.” requires that be reactivity, there no but dependent these require slight claims or In supporting the district court’s claim reactivity, they mild are be nullified and Judge opinion construction ig- Lourie’s utterly meaningless. Poly come Marine compelling nores dismisses much of this itself that mer concedes these six claims opinion evidence. The suggests that the meaningless by were rendered the district adoption examiner’s of the district court’s construction, court’s depen that “the supports construction the correctness of dent claims requiring non-zero elution test that Lourie at n. Op. construction. 1359 5. scores conflict with [the court’s] district Quite During contrary. the reexamina- Appellee’s construction.” Br. 28. tion, Polymer asked the examiner particular adopt the of Where construction of an to district court’s construction independent claim nullify evaluating would claims “biocompatible” whether the second, the specification’s obvi- anticipated were invalid claims however, inven- examiner, rejected description p-GlcNAc the “of the The ous. a specific that was made in the context of and held tion” court’s construction district example eighteen specifica- not limitation was “biocompatibility” —one Judge opinion out Lourie’s leaves reactivity permit- but instead tion. to no limited reactivity.” pertinent quoting this highly “little or no detectable ted specifica- of the portion specification. The explained examiner J.A. 39503. The explicitly the situa- states creating “avoids this definition 4, 5, 13, 14, 21 and tion where claims ... Example, p-GleNAc this [i]n further failing for improper be would no bio- the invention exhibits detectable they depend.” which the claims from limit logical reactivity. dependent Only after these 39504. J.A. added). (emphasis col.41 11.66-67 Id. consistency were canceled create the “in Judge opinion Lourie’s leaves out the district court’s construction with Example” language. This reference accept the examiner “biocompatible” did always suggest not that the does invention The ex- court’s construction. the district biological no detectable reactivi- “exhibits the cancella- explained “[w]ith aminer rather, 2 it so “in this Exam- ty”; does required which tion of the claims p-GlcNAc The fact that ple.” mere 1 or the Exam- test scores were elution example in this specification tested agrees the court’s definition iner now biological reactivity, no without showed biocompatible.” term J.A. of the more, cannot sufficient to limit examiner, from reliance on the Apart its “biocompatible” polymers term claim rests conclusion Judge opinion Lourie’s no exhibiting biological detectable reactivi- court’s to the correctness ty. fact exclusively on the almost construction Judge opinion approach The Lourie’s are instances in the entire that there two based interpreting limitation p- it where refers to specification solely example specifi- single from Lourie “of invention.” See GlcNAc references, repeatedly we approach cation is at These two Op. 1357-59. See, Inc. rejected. e.g., Graphics, Silicon however, the term do not limit the Techs., Inc., first, ATI respect to the “biocompatible.” With (Fed.Cir.2010) (“A reli- construing court’s above, specification simply discussed go so specification on the must that the of the invention ance “p-GlcNAc advantageous See p-GlcNAc in this features.” note tested acteristics I also produced through example was the "Mechan is col. 13 ll.46-67. There no indication id. specifica described in the ical Force” method pur specification p-GlcNAc produced specifica '245 ll.15-17. The tion. Pat. col.42 similarly method would to a different suant however, tion, methods discloses other also reactivity. any biological exhibit "char- producing p-GlcNAc with different (internal strictly quotation prior coextensive.” er art “having discloses no detecta- omitted)); biological ble reactivity marks Howmedica Osteonics as determined tests”). Inc., Tech., Moreover, biocompatibility Corp. Wright v. Med. after trial, (Fed.Cir.2008) (“[W]e court denied HemCon’s re- motion for JMOL a new trial on peatedly specifi- held that the fact that the and/or anticipation and obviousness because embodiment, a single cation describes opinions expert’s HemCon’s the pri- about alone, standing is insufficient to limit oth- or art wrong “were based on the definition language.”). erwise broad claim We have of biocompatibility,” Polymer against limiting “cautioned in- the claimed Techs., HemCon, Inc., Inc. v. No. 06-cv- preferred vention to spe- embodiments or (D.N.H. 100-JD, 2010 WL at *3 examples cific specification.” in the Tex. 21, 2010), July disputed because the Instruments, Inc. U.S. Int’l Trade prior p-GlcNAc art “did not disclose with Comm’n, (Fed.Cir. reactivity no biological detectable as deter- 1986). Indeed, “[v]aried use of a dis- tests,” mined by biocompatibility id. at *4. puted description term in the written dem- (“[Bjecause See also id. at *8 none of the onstrates breadth of the term rather prior cited art properties disclosed the than providing a limited definition.” John- biocompatible p-GlcNAe, as claimed Assocs., son Worldwide Inc. v. Zebco patent, the evidence at trial did not (Fed.Cir.1999). Corp., 175 F.3d obviousness.”). support findings for This never, This court has on such scant evi- on reliance this incorrect claim construc- here, dence as exists found that a single tion alone warrants a new on trial these embodiment disclosed limited issues, putting to side the one issue of of the claims. intervening rights. HemCon should at a Judge Lourie’s new approach to claim permitted minimum be to defend itself construction would enable patentees to against claims of infringing questions validity by eliminate narrow- patent by attacking its validity under a ing claims in preferred accordance with a proper claim construction. single

embodiment or example, while also allowing alleged infringers to narrow Ill beyond their valid scope to avoid infringement. approach That cannot be A correct.

I turn then to question of interven- ing rights. the judgment While II district court is affirmed by equally Under the construction, correct claim court, divided the district court rendered ignoring for a moment the issue inter- no on judgment the question vening rights, HemCon at a minimum rights, and therefore there nothing would be entitled to a new trial on all Nonetheless, affirm in that respect. I issues related validity the original agree Judge Lourie that the effect of jury claims. specifically equally divided affirmance is that instructed under the incorrect claim con- district court’s claim construction is bind- questions struction answered on the ing parties if the district court’s jury directly verdict form related to this decision had been never reviewed. Du- construction. Co., J.A. 111 (asking jury wheth- rant v. Essex 7 Wall. 74 U.S.

1371 (1868) 3, 2010, appeal an November well after the 113, (holding that til 19 L.Ed. 154 majority court. no rea to this The offers “is by equally divided court an affirmance why we not sons should consider the binding every respect as conclusive by changes to effected reexamina if parties upon as rendered upon obligated are to tion. Just we take judges every upon all the concurrence of changes of intervening account law that case”).3 The re- involved question Bradley v. appeal, affect an see Sch. Bd. of intervening is that there can be no sult Richmond, 696, 714-15, City 416 94 U.S. of words, In other under the rights. 2006, (1974); 40 476 L.Ed.2d Van S.Ct. construction, now claim court’s incorrect Co., v. Owens-Illinois Glass 311 denbark of the binding parties on result 538, 542-43, 61 S.Ct. L.Ed. U.S. 85 judgment, of affirmance the district court’s (1941), obligated we are to take ac 327 are original reexamined claims of to a that occur changes count thus no scope, and there is identical during pendency of a appeal, case on intervening rights no need for of issue Watts, v. see Watts & Co. Unione Austria majority offer “an alternative 9, 21, Navigazione, ca Di 248 U.S. 39 S.Ct. Remarkably, ground decision.” (1918) L.Ed. (holding 63 100 interpreta- majority goes legislate on to an changes must consider the in fact “eourt[s] statute. supervened in law which since least, is, ap- an unusual say This below”). Ample the decree was entered It is because the proach. particularly odd authority, majority, uncontradicted prop- that the issue is not majority thinks supports original panel’s approach of (even if before the district court’s erly us addressing intervening rights,4 issue wrong) claim construction was because majority support and the has offered no intervening issue was addressed rights not position a court take for its cannot by the district court. changes notice that occur while judicial is pending appeal. the case on is before my properly view the issue Here, entered us. while the district court majority, though believing that the 22, 2010, and judgment September on not us that the properly issue is before to this Appeal its Notice filed the district court’s issue resolved 24, 2010, September court on the examiner construction, excuses its discussion Issue not issue the Notice Intent to that the did fact panel extensively un- “dealt opinion an Ex Parte Reexamination Certificate is, course, plaining “appellate The claim that an court will consider construction See, e.g., it, alia, precedential. Biggers, Neil 409 presented an issue not below” if inter L.Ed.2d 401 U.S. 93 S.Ct. pure question “involves a of law and refusal (1972). injustice to consider it would result” appellant opportunity “the had no to raise Serv., 467 4. See Internal Revenue Hawkes v. level”); objection court at the district Borlem Cir.1972) (“This (6th Court is F.2d S.A.-Empreedimentos v. United Industriais obligated changes in fact or take notice States, (Fed.Cir.1990) ("[A] during pendency occurring of a case law reviewing precluded from is not ... appeal make court's on which would a lower considering which have be events occurred decision, perhaps though correct at the time (or court) agency tween the date of an trial entry, deny litigants operate substan- ap decision and the date of decision justice.”); Dynatech L.E.A. Inc. v. tial see also Allina, (Fed.Cir.1995) (ex- peal.”). 1372 States, issue,” thus this court must or imported and into the United States, clarify it anything patented the case as we find and such pro-

“decide Maj. panel claim, 1365. But Op. at or posed law.” amended new or who vacated, and, if the issue opinion-has been made preparation substantial for the us, before properly same, is not in fact is prior to issuance of a certificate event, unnecessary any pos- (a) in there no is provisions under the of subsection of addressing for it. If this were sible reason this section. enough, Supreme

not Court has re- 307(b) § 35 U.S.C. Sec- against peatedly writing opin- counseled 307(b) specifically incorporates thus has judgment ions where a been affirmed intervening rights provisions of reis- court,5 equally practice an divided a patents sued found section 252. Con- majority disregards. that the- here 307(b) gress was explicit section be interpreted

should to be identical in B scope to section 252: 307(b) provides Subsection On merits of the provided by similar to those pat- issue, majority incorrect is as a matter ent law section 252 with to 307(b) reis- statutory interpretation. Section Thus, patents. person sued a practicing provides: patented a invention would not be con- Any proposed amended or new claim infringer an period sidered for the be- to patentable determined incor- of an tween issuance patent invalid porated into a patent following a reex- through its conversion reexamination to proceeding amination mil have the same patent. a valid as that specified section 252 effect for patents 96-1307(1), (1980), this title reissued H.R.Rep. on the No. at 8 1980 made, right any person 6460, who pur- U.S.C.C.A.N. 6467 (emphasis add- chased, ed).6 or Thus, used within the United the “amended or new” lan- Price, 263, 5. ex Ohio rel. Eaton v. 364 any pending U.S. affect action then nor abate (1960) S.Ct. 4 L.Ed.2d any existing, cause of action then and the (explaining judgment that where is affirmed patent, reissued to the extent court, equally prac- divided "the usual substantially are original identical with the express any opinion, tice is not for such an patent, shall constitute continuation thereof expression unnecessary nothing is where continuously effect from date of settled”); Etting see also v. Bank United original patent. States, 59, 77-78, 24 U.S. Wheat. patent abridge A reissued shall not or affect (1826); Antelope, L.Ed. The 23 U.S. right any person person’s or that suc- (1825). 10 Wheat. 6 L.Ed. 268 who, prior grant cessors business reissue, made, sell, purchased, offered to or § provides, part: 35 U.S.C. 252 in relevant States, imported within used the United or States, anything patented by into United original patent surrender of the shall of, patent, the reissued to continue the use upon take effect the issue of the reissued sell, used, offer or sell to to be others patent, every reissued shall have sale, sold, law, specific thing offered for or so operation the same effect and made, sale, used, purchased, trial offered for arising, of actions for causes thereafter imported using, making, offering as if same originally granted had been unless sale, form, selling thing infringes such amended but in so as the such far patents claims of and reissued are valid the reissued which was in identical, substantially original patent. such surrender shall

1373 307(b) clearly majority Maj. Op. in- see recognizes, As the in section guage 1363-64, as it is well that state meaning have the at established same tended during prosecution in section 252. or reexamination “substantially identical” ments the old and new as well or dele patent, is on whether of a as additions The focus In rejections, identical.” can “substantially are tions of claims to overcome analyzing change meaning case a claim term that another this court patent, ordinarily to a reexamined otherwise. related would construed Piledriving Inc. v. explained: Equip., See Am. Geo Inc., (Fed.Cir. 1324, 637 F.3d 1336 quip, of a patentee A reexamined CIAS, 2011); Gaming Inc. v. Alliance infringement damages, inter entitled to (Fed.Cir. 1356, 504 F.3d 1362-63 Corp., alia, period the date of for the between Bard, 2007); Surgical C.R. Inc. v. U.S. original claims and the issuance of (Fed.Cir.2004); F.3d Corp., 388 867-69 reexamined of issuance of the date Kimberly-Clark 102 Corp., Cole v. reexamined original claims if the (Fed.Cir.1996). Here, although 532 are “identical.” Reexamined in language, identical the claims of the original their claims are “identical” to after reexamination were not identi they “without sub- counterparts are if for purposes cal Furthermore, change.” in de- stantive they “substantively because were changes whether termining substantive during changed” reexamination. made, discern have been we must scope of iden- the claims are whether majority much of the differ- makes tical, merely whether words not different 307(b) language ence in between sections are used. 307(b) 252, pointing out that section language includes the “amended new Corp. Corp., Laitram NEC The majority claims.” limits an “amend- (Fed.Cir.1998) (internal cita- 1346 307(b) under a situa- ed” claim section omitted) (first emphases and third tions in which the itself is changed. ignores This interpretation Here, original new claims are language, purpose, and the statute’s “substantially During identical.” reex- history intervening rights. patentee both agreed, amination not define by amending the claims Because statute does argument “amended,” claims, to bear that the term this term is “assumed dependent cancel six ‘ordinary, common “biocompatible” contemporary, be construed [its] should ” En- reactivity.” meaning.’ Metro. Educ. biological mean “no detectable Walters v. Inc., above, ters., so, 117 doing paten- U.S. S.Ct. In discussed (1997) (quoting was differ- L.Ed.2d 644 Pioneer a construction that adopted tee Co. v. Brunswick Assocs. Ltd. than the correct construction Inv. Servs. ent 388, 113 “biocompati- P’ship, 507 U.S. S.Ct. namely (1993)). alia, meant, “amend” inter or no detecta- 123 L.Ed.2d While ble” “little change in may connote an actual reactivity.” The effect was to narrow often ble finding only meaning that is not protect language,7 from a the claims them “amend.” invalidity. the term (2000). Dictionary change alter New International is defined "to Third "Amend” any way esp. phraseology.” Webster's are a number of quiring explicit language There cases decided change. in similar contexts that make clear that a the context of the Administrative Proce Act, amending written document can be “amended” dure an interpretive rule can be language change. “amending without a For exam considered ... a rule” 551(5), ple, under section thus requiring National Knitwear notice Manufacturers comment, even if Safety Ass’n v. there is no alteration Consumer Product Com mission, (4th Cir.1981), of the rule itself. 666 F.2d 81 United Am., Magnesium Corp. States v. quite 616 similar to this case. In National (10th 1129, Cir.2010). Knitwear, 1139 As the the Flammable Fabrics Act re held, Tenth Circuit has “if an agency quired the Safety Consumer Product interpretation rule, amends its of a it is comply specific Commission to pro effectively amending the rule itself.” cedures, Id. in addition to those under the (internal quotation omitted); marks see Act, Administrative Procedure in order to Arts, also Jerri’s Ceramic Inc. v. Consum issue “a new or flammability amended Comm’n, 205, Safety er Prod. 874 F.2d (1976) (em 206 § standard.” 15 U.S.C. 1193 (4th Cir.1989) (finding agency that an “in added). phasis flammability stan terpretation” was in fact a substantive dards for sleepwear children’s included a Rule, “amendment” to the Small Parts definition of [s]leepwear” “Children’s APA). agency thus the Legal violated the specifically excluded “underwear.” instruments can constructively often be 1615.1(a) (1980). § Thereafter, 16 C.F.R. effectively amended changing without lit statement, the Commission issued a with See, eral e.g., text. Chamberlain Group, Act, out complying with the indicating Techs., Inc., Skylink Inc. v. 1178, 381 F.3d “despite a garment’s being labeled (Fed.Cir.2004) (“For 1189 the purpose of as underwear and sleep unsuitable for determining Federal jurisdiction, Circuit wear, may the Commission bring an en we do not differentiate between actual and forcement if action it believes that constructive amendments the com [to garment is intended to be worn primarily also, plaint].”); e.g., see Battoni v. IBEW for sleeping or that it promoted has been Plan, Local No. Emp. Union 102 Pension sleepwear.” Knitwear, Nat'l 666 F.2d (3d Cir.2010) (construc 594 F.3d 235 at 83. The Fourth Circuit held that the tive pension amendment to plan); United because, Act had been violated although Starr, (8th States 533 F.3d the text of the flammability standards Cir.2008) (constructive amendment to a changed, had not “the Commission ha[d] indictment); MRI, criminal S. Colo. Ltd. v. in effect amended despite the standard Med-Alliance, Inc., express exclusion of underwear from (10th Cir.1999) (“By expressing an intent the definition of sleepwear.” Id. at 84 to be July bound on parties Just as the standard implicitly ... any prior amended [written] in National Knitwear by was “amended” agreement that an purchase asset docu statement, an agency so here the claims ment necessary was to complete the con have been “amended” a disclaimer in tract.”). A may statute also be amended the reexamination. change without a in language. See United In many other contexts the word States ex Lapp, rel. Palmer v. 244 F. 377 (6th Cir.1917) “amend” interpreted has been as not re- (finding indepen- that an act form, change patent, just which in effect dent statute, existing to an provision language, could lead to added a meaning within the an “amendment” For in Battin v. rights. example, Taggert act to that stat- in another reference the Court noted that thereto”). gen- ute “and amendments [wjhether specifica- the defect be in the eral, of a changes substance an act that ..., patentee tions or in the claim changing language is statute without and, may patent, surrender his an to as “amendment commonly referred claim, cure specification amended implication.” States v. Wel- See United specification defect.... But where the den, 103 n. S.Ct. U.S. vaguely or claim as to is made so be (1964); Agri 152 Processor Co. 12 L.Ed.2d invalid, inoperative yet an amend- (D.C.Cir.2008). 1, NLRB, 4 v. 514 may validity, protect ment it give to Thus, language of the term plain the rights against the patentee of the all require language not “amended” does subsequent infringements. change. intervening rights provi- The history of 74, 58 U.S. 17 15 How. L.Ed. 37 compel an interpretation sions themselves (1854) Similarly, in a not require of that does “amended” patentee case where a had amended the change language in of the claims. The the alia, specification during by, reissue inter intervening rights doctrine of inserting figure, an one additional judicial existed as a patents to reissued permit held law does not such “[t]he See generally construct since the 1800s. enlargement original specifica- an of the Federico, Intervening Rights Pat- P.J. in tions as will interfere with other inventors Reissues, Wash. L. Rev. 603 ent 30 Geo. acquired intervening rights.” who have (1961). 252 in the Act of Section Patent Baker, 587, App. Ficklen v. 47 D.C. 596 substantially adopted 1952 and clarified (D.C.Cir.1918) Manly (quoting v. intervening the as it had doctrine of (D.C.Cir. Williams, App. D.C. developed interpreted been the 1911)). Thus, Congress prior enacting to 82-1923, H.R.Rep. No. courts. at 8 See rights provisions the of intervening section (1952); Federico, supra, see also at 629- 252, courts that not having understood years have understood that 30. Courts for change in claim language indispen- specification the together the intervening rights, creating sible to invention. Supreme act define an The change specification that a in the could scope recognized patents Court that the rights. to intervening Contrary also lead changed by could an amendment to the assertion, I claim majority’s do not is specification where there no formal directly that these control this See, cases case. e.g., the claim. Russell amendment to do, however, They clear that 23 L.Ed. 973 make the Dodge, 93 U.S. (1876) (noting specification might Court, that a Supreme in the developing doctrine changed, substantially “be either the rights, concluded that the omission addition matter or the of new change scope of claims could without important enlarge so as to particulars, require formal and still amendments scope originally invention as recognition intervening rights. There is claimed”). legislative history in no indication intended Congress section 252 that made that a Supreme Court clear understanding on this change specification broadening in overrule courts’ initially It H.R.Rep. important No. 82-1923. As understand point. See noted, in added was ex- majority section claim agrees scope provide “similar” inter- plicitly designed changed by arguments can be made vening rights provided as those section patentee during reexamination.9 other change If in the 252. Id. the words, assumption the fundamental an specification could result in “amended” majority argument is that even where claim, why a change it to see is difficult proceeding changes reexamination by argument claim achieved cannot claim, scope of the no there are interven- also result in amended claim.8 ing rights unless there is a formal amend- majority ment to the claim. What interpret we must important, Most part does not us—in large tell because it effectuate intent of “amended” to Con- chooses to address issue in dictum gress enacting applying without the rule to this case—is provisions the reexamination statutes. Young, 56, whether, change See Ernst & when there is a Reves v. U.S. (1990) 62-63,110 (1) S.Ct. 108 L.Ed.2d amendment, scope without formal (“Thus, ‘any phrase the note’ should not be changed scope is retroactive to vali- note,’ interpreted literally ‘any mean but date, patent date the as of its issue against must be the backdrop understood (2) can infringer the accused still chal- Congress of attempting what to ac- lenge validity of patent during Acts.”). enacting complish the Securities pre-examination period. If changes “amended” refers to in the of Neither these alternatives makes purpose actual of the sense, each intervening rights directly plainly of will be contradicts directly statute, purpose thwarted. of the demonstrating thus majority power 8. The is correct section that 307 con- their disregard render its exercise in (internal requisitions templates quo- an that amended claim will be iden- ineffectual.” Brock, omitted)); certificate, tation marks 476 U.S. at tified as such the reexamination 1834; Corp. 106 S.Ct. Timken U.S. v. identify but of the failure the PTO to States, (Fed.Cir. United 421 F.3d 1357 hardly amended claim such can bind ab- 2005). parties opportunity object sent who had no failure, especially given to the PTO’s Op. ("Whether Maj. 9. See at 1363 or not Ma- "great principle public policy of ... which arguments Polymer’s rine to the examiner public forbids that interests should be during and cancellation of claims reexamina- prejudiced by negligence of the officers or may remaining have claims' affected agents they whose are care confided.” scope, they did not ‘amend’ those effective 253, 261, Cnty., Brock v. Pierce 476 U.S. 106 intervening rights purposes.... claims for (1986) (quoting S.Ct. 90 L.Ed.2d 248 sidesteps emphasizing this issue Nashville, Co., United States & St. C. L.R. well-recognized principle arguments that 120, 125, 118 U.S. 6 S.Ct. 30 L.Ed. 81 during prosecution made can the ulti- affect (1886)). well It is established that an admin- meaning mate a claim term —and thus the agency’s perform pre- istrative failure to 'scope' a claim.... While it is true that ground scribed administrative act is not for properly interpreted claims are to account for ignoring agency’s the substance of the action. arguments during prose- and concessions made See United States v. James Daniel Good Real cution, HemCon's that the conclusion Prop., 510 U.S. 114 S.Ct. purposes asserted were here ‘amended’ for (1993) ("We long recog- L.Ed.2d 490 have 307(b) added)); goes § too far.” see many statutory requisitions nized 1336; intend- Piledriving Equip., also Am. 637 F.3d at CIAS, 1362; Bard, ed guide for the officers in conduct of 504 F.3d at C.R. Cole, 867-69; upon business devolved ... them do not limit at F.3d at cannot majority’s statutory inter- the doctrine in the the error judiciary intended that the would de- The first alternative —retroac- pretation. velop poor man’s version of the doctrine original patent tively validating inadequate account for the statute’s cov- to an unfair and scope changing —leads erage. strongly suggests This by the ma- recognized As absurd result. should cover amendments dis- statute the unfairness jority, precisely this is claimer. of the doctrine of development led to the Tellingly, support the amici who See place. in the first intervening interpretation recog- court’s statute (“The doctrine of inter- Maj. Op. at 1361 that formal amendments to claim lan- nize courts rec- developed first vening rights guage during the course of reexamination substantive ognized permitting Br. are unusual. See Amicus of Soverain changes to Telling they al. at 10. too admit that et procedures left ‘the through post-issuance now, be, formal amendments are will ’ gross injustice where open door ... very avoiding purpose avoided for the make, having already begun to party, third intervening rights. the creation of Id. at article, use, previ- finds its given or sell a (arguing owners often “follow a newly in- ously lawful activities rendered seeking of not to amend their as- course patent.” (quoting a modified fringing under claims, with the settled understand- serted Co., v. Nat’l Nut Sontag Chain Stores Co. they that if could claim amend- ing avoid 281, 293-95, ments, they could also avoid 60 S.Ct. 310 U.S. words, added))). rights”). applicants other will (1940) (emphasis

L.Ed. 1204 by argument claims rather than amend intervening rights provisions make The very purpose formal methods for the changed clear that the reexamined avoiding intervening rights. future after are valid for the claims Bloom, very problem This has led numerous Engi- As noted reexamination. majority’s mechanical oppose amici to North American neering Co. v. Manufac- construction of the term “amend” and Co., turing recognize majority’s interpreta- those who 307 and 252 shield Sections intervening rights will create the tion of adversely held to be deem very opportunities for mischief and “foster invalid; patentee if the later cures that the statute was de- gamesmanship” reexamination, infirmity by reissue or al. signed to avoid. Amicus Br. of Geico et changes in the making of substantive (“[U]nder rule, patentees at 9-10 such a pre- an irrebuttable claims is treated as change the words of will be reluctant that the claims were or reis- sumption during their claims reexamination instead, and, badger sue examiners re- materially flawed. Thus the statute arguments changing meaning may infringed lieves those who claims.”); Br. of words in the Amicus liability during original claims from (“Appel- at 11 Hewlett-Packard Co. et al. the claims are validat- period before reading of the statute to exclude lee’s ed. through narrowed disclaimer would (em- (Fed.Cir.1997) 1247, 1249 for- discourage to absurd results and lead alternative— The second phasis prosecu- in favor of mal claim amendments judicial creating a version majori- history maneuvering.”). directly contrary to even more statute defeats the ty’s construction of the —is patent system notice function of the having public considered Congress statute. define the encouraging patentees to invention outside the claims scope

themselves, in- apprising thus not accused of what is available to them.

fringers

Allowing patent creating to avoid owners amending

intervening rights by is an abuse of the reexamination

argument purpose and undermines the

process 307(b) cannot

intervening rights. Section to sanction such abuses.

be construed sure, every argument during

To be give to interven-

reexamination should rise should be

ing rights, but during an argument

available where reex-

amination rises to the level of clear and

unambiguous disclaimer or disavowal original, correct claim construction.

Here, Polymer clearly and unam-

biguously disclaimed the its claim

by effectively becoming lexicogra- its own presenting limiting

pher specific, “biocompatible.”10

definition of the term I

respectfully dissent. ROY, Petitioner,

Susan G.

MERIT SYSTEMS PROTECTION

BOARD, Respondent,

Department Justice, Intervenor.

No. 2011-3107. States Appeals,

United Court of

Federal Circuit.

March findings 10. While absolute any should trict has not made factual law, here equitable intervening rights, exist as a matter of issue of equitable intervening rights fact is a intensive should be remanded issue one, involving numerous to be issues consid- court for its consideration in the first in- stance, original panel ered the district court. Because the dis- ordered. notes to the actual lan- manship persuade does not us to rule con- guage a claim. thus cannot agree We trary the plain meaning to of the statute. that a claim can be for pur- “amended” amici pointed Various fact out that 307(b) § poses of changing without such gamesmanship concerns run both claim language itself. ways, suggesting interpre- that HemCon’s 307(b), § tation if adopted, would expresses HemCon also invite concern that ex- cluding putative concept by infringers to initiate argu- amendment reexamina- 307(b) § from marginal ment the ambit of with proceedings or would noninva- a significant “create loophole” lidating prior rule, in the inter- art. Under HemCon’s vening rights patentees defense —shrewd requestor that, such a expect could even if 307(a) 9. The text of Section reads as follows: have been made relative to the immediate prior proceeding In version reexamination under sub- claims----[A]dded this chapter, appeal ject when the time has ex- underlining matter must be shown pired any appeal or proceeding [Djeleted has termi- added text.... matter must be nated, publish the Director will issue and 1.114(c) strike-through...."); § shown id. canceling any patent certificate claim of the (distinguishing prosecution argu- between finally unpatentable, determined to be con- specification, ments amendments to firming any claim of the determined claims, drawings). patentable, incorporating to be in the patent any proposed amended or new claim See, 1.530(d) ("A e.g., § proposed 37 C.F.R. 11. patentable. be determined to parte partes amendment in an ex or an inter 307(a) (2006). § 35 U.S.C. proceeding by filing reexamination is made See, 1.121(c) paper e.g., ("All directing proposed specified § 37 C.F.R. being currently changes patent specification, be amended made to the [shall] submitted claims, markings changes including with drawings.”). indicate the or to the changed, either the addition of new ultimately confirms all the reexamination amendment, important partic- matter patentable as without omission necessarily ulars, will make of the enlarge scope so as owner defending arguments originally claimed.” Russell substantive invention allowing requestor to thereby 460, 463-64, 23 L.Ed. 973 Dodge, 93 U.S. on those (1876). based allege language does not control Such event, any we cannot and In arguments. case, which not deal with does conse- speculate possible about not will of new matter or omission introduction not be- situations quences enlarge so as particulars important foresee. us and which we cannot fore originally of the invention remaining pat- The claims in the claimed. dissent criticizes our discussion originally the same as claimed. ent are intervening rights defense at HemCon’s asserting important that this issue length, sum, plain gov- directive by the in dictum has been addressed does erning permit statute before us However, orig- court. because en banc to invoke is- opinion extensively with this inal dealt PTO against claims that the confirmed

Notes

notes import far as to limitations into high degree biocompatibility.” exhibits examples appearing from or embodiments Pat. col.10 11.49-50 un- patent’s description in a written specification only in the There is no indication that the specification makes clear less high degree biocompatibility that a reactivity. claims and patentee there is no intends achieved where specification to be in the opposite. With embodiments passage suggests

Case Details

Case Name: Marine Polymer Technologies, Inc. v. Hemcon, Inc.

Court Name: Court of Appeals for the Federal Circuit

Date Published: Mar 15, 2012

Citation: 672 F.3d 1350

Docket Number: 2010-1548

Court Abbreviation: Fed. Cir.