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The traditional patent law holds that a patentee of a patent that survives reexamination is only entitled to infringement damages for the time period between the date of issuance of the original claims and the date of issuance of the reexamined claims if the original and the reexamined claims are “substantially identical.”On the other hand, if a substantive change has been made to the original claims during reexamination, the patentee is entitled to infringement damages only for the time period following issuance of the reexamination certificate.
This notion is referred to as intervening rights, which protect the public’s reliance on the scope of an issued patent. Intervening rights are granted to anyone who relied on the original scope of the issued patent and had already begun to make, use, or sell a given invention that is now newly infringing under the amended patent.In a recent Federal Circuit decision, R+L Carriers, Inc. (“R+L”) sued Qualcomm, Inc. (“Qualcomm”) asserting infringement of U.S. Patent No. 6,401,078 (“the ‘078 patent”). This is the second time R+L has brought the case to the Federal Circuit (in a prior appeal, on June 7, 2012, the Federal Circuit held that R+L’s induced infringement claims survived Qualcomm’s motion to dismiss, In re Bill of Lading Transmission & Processing Sys. Patent Litig., 681 F.3d 1323, 1346–47 (Fed. Cir. 2012), and the case was remanded against Qualcomm for further proceedings). While the case was pending, R+L filed for an ex-parte reexamination of the ‘078 patent based on prior art identified by a third party.
This strategy can be helpful if R+L believed the prior art to be troublesome and likely to invalidate the patent. Thus, R+L put the patent back into examination likely to modify the claims to be in a stronger position to survive an invalidity challenge or to “whitewash” the patent over newly found art. Although the patent survived reexamination, R+L added language to all of the claims at issue. Accordingly, this case turns on whether the original claims and the amended reexamined claims are “substantially identical” so as to avoid intervening rights to be granted to Qualcomm. The Bill of Lading PatentR+L obtained the ‘078 patent, that generally relates to an improved method of consolidating freight into trailers to optimize delivery efficiencies for the loads in each trailer.
According to the ‘078 patent, prior art shipping practices would evaluate the contents of each incoming trailer by reviewing bills of lading for the packages when they arrived at a central terminal. The patent explains that the freight on each trailer was then consolidated with freight going in the same direction and hauled away from the central terminal. The patent explains that the purpose of consolidation was to deliver all of the freight on time while using the fewest number of trailers to do so. Although load planning software at the time could help perform this task more efficiently, the patent asserts that the prior art software could not account for unscheduled freight that was not entered into the computer. To solve this alleged deficiency in the prior art, the ‘078 patent discloses a system for transmitting the contents of a trailer to the central terminal so that load planning can occur while the trailer is en route.
The system contemplates the scanning of bills of lading, transmitting those documents once scanned, and receiving the data where it can be extracted for load planning and billing purposes. The patent describes two methods for extracting the load planning information from the transmission and preparing to load manifests therefrom: (1) a computerized system automatically interpreting the data; and (2) a data entry clerk manually reviewing the information. The U.S. Patent and Trademark Office (USPTO) initially issued the patent on June 4, 2002, containing only one independent claim (original claim 1). During re-examination, in a first office action, the USPTO rejected original claim 1 as being anticipated by a key prior art reference. To overcome the USPTO’s rejection, R+L amended original claim 1 as follows (deletions shown in brackets; additions shown by underlining):
1. A method for transferring shipping documentation data for a package from a transporting vehicle to a remote processing center comprising the steps of:- placing a package on the transporting vehicle; using a portable document scanner to scan an image of the documentation data for the package, said image including shipping details of the package;- providing a portable image processor capable of wirelessly transferring the image from the transporting vehicle;- wirelessly sending the image to a remote processing center; receiving the image at said remote processing center; and- prior to the package being removed from the transporting vehicle, utilizing said documentation data at said remote processing center to prepare [[a]] an advance loading manifest document for another transporting vehicle which includes said package for further transport of the package on another transporting vehicle.
The USPTO then allowed the amended claim 1 and issued the reexamination certificate, and stated that the key prior art reference only discussed loading a “manifest for the current shipping vehicle and not an advance loading manifest document for another transporting vehicle.”Were Substantive Changes Made to Claims During Reexamination? To determine whether substantive changes have been made, and thus intervening rights exist, the Federal Circuit considers “whether the scope of the [original and amended] claims are identical, not merely whether different words are used.”The two conflicting arguments presented by Qualcomm and R+L focused on why the amendments were presented during reexamination. The Federal Circuit, though, stated that under the statute and prior case law, it is irrelevant why an amended claim is narrowed during reexamination, or even whether the patentee intended to narrow the claim in a particular way. The important aspect to note, according to the Federal Circuit, is whether the scope of the amended claim is not “substantially identical” to the scope of the original claim — based on a normal claim construction analysis.
When the scope is different, intervening rights apply. The fact that the reason for the amendment during reexamination might not have been for the purpose of narrowing the claim in a particular way does not matter. In determining whether an amended claim is narrower, the Federal Circuit stated that the analysis includes determining whether there is any product or process that would infringe the original claim, but not infringe the amended claim. The purpose of the amendment is irrelevant to this inquiry. The Federal Circuit ultimately agreed with the District Court’s thorough claim construction analysis of original claim 1 and its conclusion that the term “loading manifest” is broad enough to encompass both manual and computer generated documentation. The question then is whether the amended claim 1 covers a different scope. The Federal Circuit noted that R+L only made amendments to original claim 1 after the USPTO rejected original claim 1 over various pieces of prior art. The term “advance” was added during reexamination in amended claim 1 to get around the key prior art, which, among other things, disclosed manual entry of the loading manifest.
To determine that amended claim 1 resulted in a narrowed claim scope, the Federal Circuit placed reliance on reasons for allowance given by the examiner during reexamination. Namely, the examiner expressly stated he was allowing amended claim 1 because “the manifest discussed by [the prior art] is a manifest for the current shipping vehicle and not an advance loading manifest document for another transporting vehicle.” In other words, the examiner’s focus in allowing the claims was not on whether a computer produced the loading manifest, but on the additional limitation that the advance loading manifest is “for another transporting vehicle.” Although the amendment may not have limited amended claim 1 to computer-produced loading manifests, the examiner’s commentary reveals a method that would be covered by original claim 1 but not amended claim 1: the process of preparing a loading manifest “for the current shipping vehicle.” Thus, claim 1 was narrowed during reexamination and is not substantially identical to original claim 1. The Federal Circuit noted that even if the word “advance” was only added to “provide clarity,” as R+L argues, R+L clearly understood that it was limiting the scope of its claims in another way to get around the prior art. This is almost always necessarily the case when presenting amendments during prosecution, and also follows the Festo presumption that amendments made during prosecution are presumed to be for reasons of patentability. R+L was unable to overcome this presumption.
Since amended claim 1 is not “substantially identical” to original claim 1, R+L is not entitled to infringement damages prior to issuance of the reexamination certificate. At this time in the litigation, there was no dispute that Qualcomm ceased its allegedly infringing activity. As a result, there can be no damages against Qualcomm, and the infringement claims were dismissed by the Federal Circuit.
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