NetAirus Tech., LLC v. Apple, Inc., No. 2:10-cv-03257-JAK-E, slip op. (C.D. Cal. May 23, 2013).
Apple successfully limited the Plaintiff’s damages period to the date of reissue in NetAirus by relying on 35 U.S.C. § 252. But, the court also said absolute intervening rights did not apply to process claims, so they did not apply in this case. The lesson – when patents reissue, especially when the language of the claims-in-suit is changed, consider the effect of 35 U.S.C. § 252.
NetAirus sued Apple alleging infringement of method claims. Apple initiated a reexamination of the patent-in-suit. The PTO added a phrase to the claims and issued a reexamination certificate. Id. slip op. at 1-2.
Apple filed a motion pursuant to 35 U.S.C. § 252 to limit Plaintiff’s damages and to assert absolute intervening rights. Granting in part and denying the motion in part, the court decided:
- Section 252 provides reissued claims “substantially identical” to those of the original patent, preserving a patentee’s right to recover from the date of the original patent. By implication, claims not “substantially identical” to the original claims only give rise to a cause of action as of the date of the reissue. Id. slip op. at 4.
- The phrase the PTO added to the claims-in-suit meant the claims were not “substantially identical” to the claims of the original patent. Id. slip op. at 7. Thus, the starting date for damages was the date of the reexamination certificate, not the date of the original claims. Id. slip op. at 9.
- Section 252 provides for “absolute” and “equitable” intervening rights. Id. slip op. at 4. Apple asserted only absolute intervening rights in its motion. Id.
- Section 252 uses the term “the specific thing” to refer to the tangible article which qualifies for absolute intervening rights. Id. slip op. at 6 (citing Shockley v. Arcan, Inc., 248 F.3d 1349, 1360 Fed. Cir. 2001). Absolute intervening rights do not apply to process claims and, thus, did not apply in this case dealing only with process patents. Id. slip op. at 8.