R+L Carriers, Inc. v. Qualcomm, Inc.
Addressing whether language added to a claim during ex parte re-examination resulted in substantive changes, the U.S. Court of Appeals for the Federal Circuit affirmed the lower court’s dismissal of the infringement claims, holding the amended claim was not substantially identical to the original claim. R+L Carriers, Inc. v. Qualcomm, Inc., Case No. 14-1718 (Fed. Cir., Sept. 17, 2015) (O’Malley, J.).
R+L filed suit against Qualcomm in 2009 for induced infringement of a patent related to a method to consolidate freight of trailers traveling to a central location. The patent discloses a system to transmit the contents of trailers to the central terminal while the trailers are still en route, so the load planning and consolidation can occur before the trailers arrival. The patent allegedly describes both computerized and manual systems for extracting the load planning information from the transmissions and preparing the loading manifests.
In 2013, R+L filed for ex parte re-examination of its own patent-in-suit based on prior art identified by a third party. To overcome the prior art, R+L amended the language of the sole claim: “said remote processing center to prepare [a] an advance loading manifest document for another transporting vehicle.” (Deletion in brackets, additions in italics.) The U.S. Patent and Trademark Office (PTO) allowed the amended claim, stating the prior art reference only discussed a loading manifest for the current shipping vehicle and not an advance loading manifest for another vehicle.
The district court held the amendment substantively narrowed the claim, thereby precluding recovery of damages for infringement prior to the date the PTO issued the re-examination certificate. According to the district court, the amended claim was substantially narrowed because it only covered computer-prepared loading manifests rather than both computer and manually prepared loading manifests that fell within the scope of the original claim. Because Qualcomm sold its allegedly infringing business unit before the issuance of the reexamination certificate, R+L conceded it could not recover damages against Qualcomm and stipulated to the entry of a final judgment, dismissing the infringement claim. R+L then appealed to the Federal Circuit.
The issue for the Federal Circuit was whether the lower court correctly determined that the amended claim was substantively narrower than the original claim. Qualcomm argued that the claim was substantively narrowed in reexamination because the insertion of the term “advance” into the claims limited it to only computer-generated loading manifests (and that the claim now excluded manual loading manifests). R+L argued that the claim was always limited to computer-generated or computer-assisted documents and that the amendment only clarified that the loading manifest must be a document for another transporting vehicle (rather than the current transport vehicle). The Federal Circuit disagreed with the premise of both sides’ arguments.
According to the Federal Circuit “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.” What matters is whether the scope of the amended claim is not “substantially identical” to the scope of the original claim. Here, the Federal Circuit explained that the amended claim was not substantially identical to the original claim because the original claim encompassed scope that the amended claim does not. The Federal Circuit also found that R+L clearly understood that it was limiting the scope of its claims to get around the prior art. For these reasons, R+L is not entitled to infringement damages prior to issuance of the reexamination certificate.