In my earlier post, I summarized the panel opinion in Marine Polymer Technologies, Inc. v. Hemcon, Inc.  On September 26, 2011, a panel of the Federal Circuit reversed the district court’s decision, concluding that HemCon had acquired intervening rights in the ‘245 patent based on actions taken in a reexamination proceeding.   That opinion was vacated and Marine Polymer’s petition for rehearing en banc was granted on January 20, 2012.  In a divided decision, the Federal Circuit en banc affirmed the judgment of the district court.

The Federal Circuit majority upheld the district court’s interpretation of “biocompatible” as being “no detectable reactivity.”  This was a “win” for Marine Polymer, because a broader interpretation of “biocompatible” would likely have rendered the claims invalid in view of prior art relating to non-zero reactivity detection.

The analysis first looked at the words of the claims themselves.  Since the claims did not define the term “biocompatible,” the analysis shifted to the specification.  The majority found adequate teachings in the specification to uphold the district court’s interpretation of “biocompatible.”  [Editor’s Note:  Judge Dyk dissented on the conclusion that the specification supported this point, which the majority addresses in footnote 4.]

HemCon unsucessfully argued that since there were dependent claims that recited non-zero elution test scores, the definition of “biocompatible” must be broader than “no detectable reactivity.”  However, the majority dismissed this argument based on its often-cited view that “claim  differentiation is ‘not a hard and fast rule and will be overcome by a contrary construction dictated by the written description or prosecution history.’ Seachange Int’l , Inc. v. C-Cor, Inc., 413 F.3d 1361, 1369 (Fed. Cir. 2005); see also Laitram Corp v. Rexnord, Inc., 939 F.2d 1533, 1538 (Fed. Cir. 1991) (‘Claim differentiation is a guide, not a rigid rule.’)”  This was also significant, because the en banc Court could have decided that the different dependent claims mandated a broader interpretation of “biocompatible” which would have raised the chances of invalidity of the independent claims based on the non-zero reactivity detection prior art.

Perhaps the most interesting portion of the opinion is the section on intervening rights.  The en banc Court provided a detailed history of intervening rights arising from reissue and reexamination proceedings.  The majority decision required amended or new claims as a first step in an intervening rights analysis.  The second step involves analyzing the amendment to make sure that the amended or new claim involves substantive change, consonant with Kaufman Co. v. Lantech, Inc., 807 F.2d 970, 975-77 (Fed. Cir. 1986).

The majority went further to find: 

Section 307(a) identifies three categories of claims in a reexamined patent: (1) claims that existed in the original patent but have been cancelled as unpatentable, (2) claims that existed in the original patent and have been confirmed as patentable, and (3) amended or new claims that did not exist in the original patent but have been found to be patentable and will be incorporated into the patent by the PTO.  In providing for intervening rights, [35 U.S.C.] § 307(b) is limited to the third category of claims, as evidenced by its corresponding reference to any “amended or new claim” that is “incorporated into a patent.” Any interpretation of “amended” that includes disavowal or disclaimer by argument alone, as advocated by HemCon, would conflict with the rest of § 307, for it is difficult to envision how arguments about claim meaning could be “incorporated into a patent” by the Director of the PTO. Finally, it is clear that “amended” is a term of art in patent prosecution, including reexamination proceedings, and in that context connotes formal changes to the actual language of a claim. We thus cannot agree that a claim can be “amended” for purposes of § 307(b) without changing the claim language itself.

The dissent by Judge Dyk was joined in full by Judges Gajarsa, Reyna, and Wallach and in part by Judge Linn.  The dissent takes the view that the specification does not support the interpretation upheld by the majority.  The dissent argues that only one example in the specification supports this interpretation of “biocompatible” and that the other examples do not.  Further, the dissent argues that it is improper to use a single example under the approach of Silicon Graphics, Inc. v. ATI Techs., Inc., 607 F.3d 784, 792 (Fed. Cir. 2010) and Howmedica Osteonics Corp. v. Wright Med. Tech., Inc., 540 F.3d 1337, 1345 (Fed. Cir. 2008).  The dissent would remand the case for further findings based on a broader interpretation of “biocompatible.” 

The dissent goes on to assert that it is inconsistent for the majority to observe that arguments can change the scope of a claim, yet not qualify for a possible “substantive change” for the purposes of intervening rights.  It cautions that patentees will use arguments to overcome rejections in reexam (instead of amendments) to avoid the possibility of intervening rights under this decision.  The dissent is concerned that the decision may support a kind of “retroactive validation” of the patent because arguments that clear the hurdle of reexamination may affect claim scope with no loss of past damages.

The reexamination practitioner has to be relieved to some extent that any argument made to overcome rejections in reexamination will not become a tortured claim of intervening rights in litigation.  But, one can only imagine fact patterns where the new or amended claim requirement will be tested again.