Digest of R+L Carriers, Inc. v. Qualcomm, Inc., No. 2014-1718 (Fed. Cir. Sept. 17, 2015) (precedential). On appeal from S.D. Ohio. Before Newman, O’Malley, and Wallach.

Procedural Posture: While plaintiff R+L Carriers’ suit for patent infringement was pending, plaintiff amended the claims of the asserted patent in an ex parte reexamination. Since the district court determined that the amended claims and original claims were not substantially identical and defendant Qualcomm ceased its allegedly infringing activities prior to issuance of the reexamination certificate, the plaintiff stipulated to a final judgment dismissing its infringement claim and appealed the district court ruling that the reexamination claim amendments substantively changed the scope of the asserted claim. The CAFC affirmed.

  • Ex Parte Reexamination – Scope of Reexamined Claims: The Supreme Court inTeva Pharms. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831 (2015) held that the subsidiary factual matters of a claim construction ruling are to be reviewed for clear error. The review of the scope of reexamined and original claims is a matter of claim construction. Therefore, in light of Teva, the district court’s subsidiary factual findings on the scope of the reexamined and original claims are to be reviewed for clear error, but the ultimate conclusion regarding the scope of the claims is reviewed de novo.In reexamination, plaintiff added language to the claims that the examiner expressly relied on in his reasons for allowance, and the examiner’s commentary reveals a method that would be covered by the original claim but not the reexamined claim. Thus, the CAFC affirmed the district court’s determination that, as a result of the plaintiff’s amendment narrowing the asserted claim during reexamination, the original and reexamined claims were not substantially identical to one another. Since the plaintiff conceded that the defendant did not perform any allegedly infringing conduct after the PTO issued the reexamination certificate, the district court properly entered judgment dismissing the case.