A recent Federal Circuit en banc decision clarified the scope of intervening rights as they pertain to patents that have been reexamined. Marine Polymer Technologies, Inc. v. HemCon, Inc., 2010-1548 (Fed. Cir. March 15, 2012). The Federal Circuit held that under 35 U.S.C. § 307, after a patent emerges from ex parte reexamination, rights are available “only with respect to ‘amended’ or ‘new’ claims in the reexamined patent,” slip op. at 20, i.e. when the text of the claim changes during reexamination or when new claims are added. In doing so, the Federal Circuit sided with positions taken by Marine Polymer and several of the amici curiae, including the Biotechnology Industry Association (BIO) and Pharmaceutical Research and Manufacturers of America (PhRMA), who “argu[ed] for a faithful reading of the statutory text.” (Slip op. at 18, 25). Venable submitted the amicus brief on behalf of BIO and PhRMA. (www.Venable.com/federal-circuit-vacates-opinion-in-marine-polymer-technologies-inc-v-hemcon-inc-02-16-2012).

To reach its conclusion, the court relied on the dictionary definition of “amended,” the statutory language of section 307, and patent prosecution practice. Id. at 22-23. First, the dictionary definition of “amended” is “to alter formally by adding, deleting or rephrasing” and thus, the court held, does not include argument. Second, the court determined that any interpretation of section 307 that encompasses disavowal or disclaimer by argument would be contrary to the statutory language because “it is difficult to envision how arguments about claim meaning could be ‘incorporated into a patent’ by the Director of the PTO.” Id. Third, the court recognized that in patent prosecution, the term “amended” denotes formal changes to the actual language of the claim (with additions and deletions marked in the text). Id. Accordingly, Judge Lourie, writing for the 6-4 en banc majority, noted that “[w]e thus cannot agree that a claim can be ‘amended’ for the purposes of §307(b) without changing the claim language itself.” Id. at 23-24.

The court adopted a two-step analysis for determining if intervening rights arise during reexamination: (1) whether the asserted claim is amended or new; and (2) whether any such amended or new claims were substantially changed. Id. at 21. However, “[o]nly if the claim at issue is new or has been amended may a court proceed to the second step of the analysis and assess the substantive effect of any such change.” Id.

While the case pertains only to ex parte reexamination, given the similarities in statutory language, the holding should also apply to reissued patents, inter partes reexaminations, and the new post-grant review and inter partes review proceedings under the America Invents Act. The Federal Circuit was split 6-4, with the dissent taking the position of the vacated panel decision, that “amended” can include patentee arguments about claim scope made during reexamination. The district court’s holding of infringement and assessment of damages was affirmed, and unless HemCon successfully petitions for certiorari, the case is closed.