In R+L Carriers, Inc. v. Qualcomm, Inc., Appeal No. 2014-1718, the Federal Circuit affirmed a district court’s finding that claims amended during reexamination were not substantively identical to the original claims, and the resulting dismissal.
R+L sued Qualcomm alleging infringement of a patent relating to freight consolidation. Claim 1, the sole independent claim, recites “a method for transferring shipping documentation data for a package from a transporting vehicle to a remote processing center.” While the suit was pending, R+L filed for ex partereexamination of its asserted patent. During the reexamination, R+L amended claim 1 to change a limitation of preparing “a loading manifest” to preparing “an advance loading manifest document for another transporting vehicle.” The PTO allowed claim 1 and issued the reexamination certificate, explaining that the key prior-art reference only discussed a loading “manifest for the current shipping vehicle and not an advance loading manifest document for another transporting vehicle.”
Under 35 U.S.C. § 252, R+L could only recover damages for Qualcomm’s acts before amended claim 1 issued if amended claim 1 is “substantially identical” to original claim 1. Qualcomm had stopped its allegedly infringing activities before the reexamination certificate issued, so those were the only accused acts. The district court held that the amendment substantively narrowed the claim, finding that, while the original claim 1 covered both manually and computer-prepared loading manifests, amended claim 1 encompassed only the preparation of computer-generated loading manifests. Thus, R+L was precluded from recovery of damages and its case was dismissed. R+L appealed.
The Federal Circuit affirmed on different grounds. The Federal Circuit held that amended claim 1 was still broad enough to cover both computer-generated and manual loading manifests. But the Federal Circuit noted that the PTO based the reasons for allowance on the amendments made during the reexamination, and that the “examiner’s commentary reveals a method that would be covered by original claim 1 but not amended claim 1.” The Federal Circuit further explained that “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.” Accordingly, the Federal Circuit affirmed the district court’s holding that the amended claims were not “substantially identical” to the claims, and the resulting dismissal.