INTRODUCTION

On March 15, 2012, an en banc Federal Circuit held in Marine Polymer Tech., Inc. v. HemCon, Inc. that statements made during reexamination are, without more substantial proof of claims, insufficient to generate “intervening rights” faccused infringer. This is the case even if those statements narrow the scope of the claim and are accompanied by claim cancellations.

BACKGROUND

Intervening Rights

Under 35 U.S.C. Section 307(b), accused infringers are granted intervening rights for any amended or new claims resulting from a reexamination proceeding. Intervening rights allow third parties to use the patented invention of the amended or new claims if the third party used, or made substantial preparation to use, the invention of the amended or new claims before the issuance of the reexamination certificate. There are two types of intervening rights in the reexamination context: absolute intervening rights, and equitable intervening rights. The doctrine of absolute intervening rights requires that claims of the reexamination that are not substantially identical to those of the original patent cannot lead to liability for any infringement pre-dating the newly added/amended claims of the reexamination. In this situation, the third parties are relieved from any liability on past damages. The doctrine of equitable intervening rights is judicially administered in accordance with the principles of equity to protect business investments made prior to the issuance of the newly added/amended claims. In this situation, the third parties may be relieved from any future infringement liability.