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“Would yee both eat your cake and have your cake?”
John Heywood [1497-1580]

“The fool that eats till he is sick must fast till he is well.”
George Walter Thornburg [1828-1876]

“My cake is dough.”
William Shakespeare [1564-1616]

Although reexamination can provide an excellent vehicle for tightening a patent’s claim scope as a prelude to an enforcement action, the risk of making an amendment or argument during the reexamination process that the patent practitioner will live to regret is substantial. Too often, a patentee’s seemingly innocuous arguments and/or amendments made during reexam to insure that the patentee secures a successful result will come home to roost during a subsequent infringement suit. This reexamination conundrum is discussed in this paper in the context of recent case law developments, and the impact of a proposal to revamp the reexamination process is addressed.

This case concerned a patent 2 covering storage crates. Original claim 1 of the patent contained the “open” phraseology “comprising”. Only claims 2, 11 and 14-16 survived reexamination, and only claims 2 and 11 were at issue in the infringement suit. Claims 2 and 11 both contain a limitation requiring that the bottom edge of the crate merge with at least a substantial portion of the bottom edge of the central portion of the crate’s front wall. During reexamination, 3 the claims were rejected over a prior art crate disclosed in a “DePutter” 4 patent. In order to distinguish over the disclosures of the DePutter reference, Spectrum argued that in this prior art patent, the bottom side merges with the top edge of the central portion of the front wall, but not the bottom edge. Apparently the Patent Office sustained the patentability of claims 2 and 11, and issued a reexamination certificate, 5 solely on the basis of this argument.

With the reexamination certificate in hand, Spectrum sued Sterilite, and the district court, after a hearing on cross-motions for summary judgment, granted Sterilite’s cross-motion for judgment of noninfringement, and denied Spectrum’s cross-motion for summary judgment of infringement. 6 On appeal, the Federal Circuit made a de novo review of the summary judgment grant. First, the Court did a claim construction comparing the accused device with the asserted claims in light of the so-called intrinsic evidence 7 that was available. Following the established rule that unambiguous intrinsic evidence in the form of statements made the patentee during prosecution to distinguish a claim over prior art may serve to narrow the scope of the claim being asserted. The Court observed that a patentee, after relinquishing subject matter during prosecution, cannot during a subsequent litigation successfully “escape reliance [by the defendant] upon this unambiguous surrender of subject matter.” 8 Accordingly, the claims cannot be interpreted “one way in order to obtain their allowance and in a different way against accused infringers.” 9

The apparent effort by patentee to recapture claim scope that it had surrendered during the reexamination proceeding was founded in patentees argument regarding the expansive claim term “comprising”. This open-ended term typically serves as a “catch-all” to preclude potential infringers from successfully avoiding infringement by adding elements to those recited in patentee’s claimed device. Spectrum asserted that their claims should encompass the Sterilite device in view of this catch-all phrase based upon the reasoning that Sterilite had done nothing more than add an irrelevant, unrecited element to the “front” of an otherwise infringing device. 10 As an additional position, Spectrum asserted that claims 2 and 11 of the reexamined ‘202 patent do not limit the recited front wall to any particular height or preclude encompassing crates in which the bottom side merges with both the bottom and top of the front wall’s central portion. 11

The Federal Circuit did not accept Spectrum’s argument. More specifically, the Court reasoned that if the term “comprising” permits the presence of any unrecited elements, then this claim language would permit transforming merger of the bottom side with the bottom and top edges of the central portion into merger of the bottom side with the top edge alone. 12 However, this embodiment is recited in the prior art DePutter patent, and the reexamined claim language cannot be interpreted to read on the art distinguished in the reexamination. The Court stated pointedly that “‘comprising’ is not a weasel word with which to abrogate claim limitations.” 13 Therefore, the Court concluded that Spectrum could not recapture a broad scope claim construction that it had clearly given up in distinguishing over the DePutter patent during the course of the reexamination proceeding. Based upon this conclusion, the Court upheld the district court’s summary judgment of no infringement.

The object lesson to be drawn from this case is that, when undertaking a reexamination on behalf of your client as a prelude to an infringement, be aware that both your amendments and your arguments will be asserted against you in a least favorable light by an accused infringer. When added to the arsenal of other defenses available to the defendant on the invalidity side 14 of a patent litigation, the patent practitioner has good reason to be wary of initiating a reexamination in the first place. Clearly there is a significant risk of cluttering a clean record with fodder to unwittingly support an unwanted noninfringement defense.

This case considered the issue as to whether claim changes made during a reexamination amounted to “substantive” changes, thereby limiting the patentee’s entitlement to damages to the period following issuance of the reexamination certificate. The plaintiff, Laitram, has a patent covering technology relating to an electro-optical printer that printed alphanumeric characters on a photosensitive recording medium. The defendant, NEC, appealed to the Federal Circuit the district court’s 16 denial of NEC’s motion for Judgment as a Matter of Law (“JMOL”) premised on the argument that claims 1 and 2 of the reexamined patent 17 are not identical in scope to claims 1 and 2 of the original patent. The key basis for NEC’s alleged claim differences was the term “type quality” added during reexamination to independent apparatus claim 1 and independent method claim 2.

In a nutshell, assuming that the claims of the reexamined patent, and its original counterpart patent, are identical, then a patentee is entitled to damages for infringement during the period between the time of the original patent’s issuance and the time of the issuance of the reexamination certificate. If those claims are not identical, the period for damages begins on the date of the reexamination certificate’s issuance. The claims are considered “identical” if no substantive change was made in the claims during the reexamination.

Paralleling the Markman 18 rule that claim construction defining the scope of a patentee’s right is a matter of law, the Federal Circuit reviews without deference the conclusion as to whether the claim scope remained identical between the original patent’s issuance and the issuance of the reexamination certificate. In an earlier ruling between the same parties, the Federal Circuit held that Laitram’s amendments following a prior art rejection in the reexamination proceeding were not “per se” substantive changes. On this appeal, Laitram argued that for the non-mechanical printing art of the subject patent, “alphanumeric characters” is equated with “type characters”, and that both the original claims and the reexamined claims were, in essence, covering the same subject matter, namely “alphanumeric characters of type quality”. The Federal Circuit did not accept this argument.

The Federal Circuit conceded that “it is difficult to conceive of many situations in which the scope of a rejected claim that became allowable when amended is not substantively changed by the amendment”. More specifically, in reaching its conclusion that the reexamined claims appear on their face to cover only a printing apparatus or method of printing which generates “type quality” alphanumeric characters, the Court looked to the prosecution history of the reexamination application. In the prosecution history, there was clear argument distinguishing the subject invention from the prior art based upon the reexamination claim phraseology alphanumeric characters “of type quality”. On this basis, the Court held that Laitram is not entitled to damages prior to the issuance of the reexamination certificate.

The object lesson to be drawn from this case is that if a patent practitioner makes a claim amendment during reexamination, but still plans to keep the reexamined claims “identical” to the claims of the original patent, they should make appropriate argument in the prosecution history. Nonetheless, the Federal Circuit appears to be hard-pressed to view prior art rejections withdrawn in the face of claim amendments as not changing the “identical” nature of the claims. Moreover, any amendments effected during reexamination to insure that a potential infringer is “caught in the net” of infringement are subject to court scrutiny. Such amendments, if construed by the court to have a “broadened” meaning vis-à-vis the original claims, risk being judged as invalid, a heavy risk indeed. 19

Any time a patentee makes an amendment to the claims during reexamination, there is a risk that the patent will be held invalid for violating Section 305 of the patent statutes. 20 Furthermore, the absence of patentee’s reasons for amending claims poses its own set of risks. The recent Federal Circuit decision in Sextant Avionique, S.A. v. Analog Devices, Inc. 21 makes it clear what happens when the patent owner fails to rebut the Warner-Jenkinson 22 presumption that amendments were made to support patentability. More specifically, when no reasons are given for the amendment, then there will be no consideration of any infringing equivalents to the invention of the amended claim under the doctrine of equivalents.

Legislation introduced in the 105th Congress as the “Omnibus Patent Reform” 23 is being re-introduced in the 106th Congress, in modified form by Rep. Coble. 24 The new legislation will give an opportunity for enhanced participation by third party requesters in the reexamination proceedings. If this draft legislation is enacted, patentees might be expected to shoulder a greater burden in such an inter partes proceeding, initiated by a third party requester. Such a proceeding may necessitate a more detailed explanation of amendments made during the course of the reexamination than otherwise might be desired, resulting in a detailed record in the file that will undoubtedly be revisited in a subsequent patent enforcement action.

There appears to be no simple solution that will obviate the risk associated with amendments and arguments that are part-and-parcel of a reexamination proceeding, but the patent practitioner should consider carefully other alternatives before initiating the proceeding. Within the framework of the current law, the prudent practitioner will hopefully catch claim flaws occurring during prosecution of the original application, or at an early date after issuance, so that the alternative of a reissue application can be considered. By using that alternative, at least the risk of claim invalidity caused by a claim construction determination, to the effect that the claims have been broadened, will be mitigated.

ENDNOTES

1. Spectrum International Inc. v. Sterilite Corp., 164 F.3d 1372 (Fed. Cir., December 9, 1998).
2. U.S. Patent 4,971,202, issued on November 20, 1990. Claim 1 of the ‘202 patent reads as follows:
   

   A stackable crate comprising: (a) a pair of opposing sidewalls; (b) a back wall coupled to the sidewalls; (c) a front wall coupled to the sidewalls and having a first substantially rectangularly shaped opening at the top portion of the front wall and a second substantially rectangularly shaped opening at the bottom portion of the front wall, thereby defining in the front wall a central portion with the bottom edge of the central portion extending to form at each end a lower leg segment and the top edge of the central portion extending to form at each end an upper leg segment; and (d) a bottom side being planar as the bottom side extends away from the back wall and tapering upwardly to merge with the central portion, wherein the bottom side as [sic- is] joined to the sidewalls and to the back wall to define a storage compartment in the interior of the crate.

3. On January 3, 1994 Spectrum apprised Sterilite of its possible infringement of the ‘202 patent and, on that same day, mailed a request for reexamination to the PTO. See Spectrum International, 164 F.3d at 1374.
4. U.S. Patent 3,682,351.
5. Reexamination Certificate B1 4,971,202, issued on May 27, 1997. A key limitation of claim 2 reads “wherein the bottom side merges with at least a substantial portion of the bottom edge of the central portion of the front wall” [emphasis inserted].
6. United States District Court for the Southern District of New York. See Spectrum International Inc. v. Sterilite Corp., Civ. A. No. 96-CIV-8017 (WK) (S.D.N.Y. Jan. 27, 1998).
7. Intrinsic evidence includes the claims, the written description, and, if in evidence, the prosecution history. See Spectrum International, 164 F.3d at 1378.
8. Spectrum International, 164 F.3d at 1379.
9. Id.
10. Spectrum International, 164 F.3d at 1377.
11. Id.
12. Id.
13. Spectrum International, 164 F3d at 1380.
14. For currently hot invalidity defenses relating to misjoinder and nonjoinder of inventorship, see generally Dale L. Carlson & James R. Barney, The Division of Rights Among Joint Inventors: Public Policy Concerns After Ethicon v. U.S. Surgical, 39 IDEA 251,266 (vol. 2, 1999). For a classically hot invalidity defense based upon best mode, see generally Dale L. Carlson, The Best Mode Disclosure Requirement in Patent Practice, 60 J. Pat Off. Soc’y 171, 197 (1978).
15. Laitram Corp. v. NEC Corp., 163 F.3d 1342. (Fed. Cir. Dec. 18, 1998).
16. Laitram Corp. v. NEC Corp., Civ. A. No. 89-1571-N, 1997 WL 539890 (E.D.La. Sept. 2, 1997).
17. In pertinent part, claim 1 of the reexamination certificate for U.S. Patent 3,952,311 reads: “An electro-optical apparatus for printing type quality alpha-numeric characters at high speed …”(emphasis in original).
18. Markman v. Westview Instruments, Inc., 517 U.S. 370 (Sup. Ct. 1996).
19. See Anderson v. International Engineering and Manufacturing, Inc., 160 F.3d 1345 (Fed. Cir. Nov. 2, 1998).
20. 35 U.S.C. 305 states, in pertinent part, that “no proposed amended claim or new claim enlarging the scope of a claim of the patent will be permitted in a reexamination proceeding…”. See Thermalloy Inc. v. Aavid Engineering Inc., 121 F3d 691 (Fed. Cir. 1997).
21. 1999 WL 112040 (Fed. Cir.(Cal.)), 49 U.S.P.Q.2d 1865 (Feb. 26, 1999).
22. Warner-Jenkinson v. Hilton Davis, 520 U.S. 17 (Sup. Ct. 1997).
23. See H.R. 400 and S. 507.
24. Rep. Howard Coble (R-NC) is Chair of the House Intellectual Property Committee. The new draft legislation, entitled “American Inventors Protection Act of 1999”, includes proposed revisions to 35 U.S.C. 305 to provide an opportunity for greater participation by third party requesters in reexamination proceedings. Hearings on the Committee Print of this draft legislation were held on March 25, 1999.