Intervening Patent Rights

Absolute or Equitable Intervening Rights, It Matters

Delaware District Court grants-in-part and denies-in-part patentee’s motion for summary judgment regarding accused infringer’s defense of intervening rights.  Sonos, Inc. v. D&M Holdings, Inc.,No. 14-1330-WCB (D. Del. Nov 7, 2017). The owner 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 the reexamined claims if the original and the reexamined claims are substantially identical.” Convolve, Inc. v. Compaq Comput. Corp.,812 F.3d 1313, 1322-23 (Fed. Cir. 2016). This case pertains to an issue of law not squarely addressed by the Federal Circuit—i.e., whether 35 U.S.C. § 252, second paragraph, first sentence extends to process claims (or only to product claims).  First, a little background… The first sentence of 35 U.S.C. § 252, second paragraph commonly is referred to as a defense of absolute intervening rights. This defense allows a party whose products infringe a reissued or reexamined patent to continue to use or sell specific products that were made, purchased, or used before the reissuance or reexamination, if the asserted claim was not in the original patent, so long as the accused infringer began its infringing activity before the patent was reissued or… Read More »Absolute or Equitable Intervening Rights, It Matters

Absolute or Equitable Intervening Rights: It Matters

A Delaware District Court grants-in-part and denies-in-part patentee’s motion for summary judgment regarding accused infringer’s defense of intervening rights.  Sonos, Inc. v. D&M Holdings, Inc., No. 14-1330-WCB (D. Del. Nov 7, 2017). The owner 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 the reexamined claims if the original and the reexamined claims are substantially identical.” Convolve, Inc. v. Compaq Comput. Corp., 812 F.3d 1313, 1322-23 (Fed. Cir. 2016).  This case pertains to an issue of law not squarely addressed by the Federal Circuit—i.e., whether 35 U.S.C. § 252, second paragraph, first sentence extends to process claims (or only to product claims).  First, a little background… The first sentence of 35 U.S.C. § 252, second paragraph commonly is referred to as a defense of absolute intervening rights. This defense allows a party whose products infringe a reissued or reexamined patent to continue to use or sell specific products that were made, purchased, or used before the reissuance or reexamination, if the asserted claim was not in the original patent, so long as the accused infringer began its infringing activity before… Read More »Absolute or Equitable Intervening Rights: It Matters

Intervening Rights Do Not Protect Accused Patent Infringer Despite Amendment During Reexamination

The Federal Circuit recently provided a refresher lesson about intervening rights, particularly about what sources of evidence the court may find persuasive, in Convolve, Inc. et al. v. Compaq Computer Corp. et al., No. 2014-1732 (Fed. Cir. Feb. 10, 2016). At least in this case, the court weighed evidence from the original examination of the patent more heavily than evidence from the reexamination when applying the test for intervening rights. Intervening rights protect accused infringers when a patentee amends a patent in a reexamination proceeding. See 35 U.S.C. § 252. The test is whether the scope of the claims changed during the reexamination: for the patentee to collect damages for infringement occurring before the reexamination, the scope of the claims before the reexam must be identical to the scope of the claims after. The court reiterated, however, that the test is substantive. The language of the claims may change so long as the substantive scope does not. In the reexamination for U.S. Patent No. 6,314,473, the language did change. In response to an obviousness rejection, Convolve, the patentee, amended the term “acoustic noise” to “seek acoustic noise.” The examiner had treated “acoustic noise” under the broadest reasonable interpretation as encompassing… Read More »Intervening Rights Do Not Protect Accused Patent Infringer Despite Amendment During Reexamination