Intervening rights do not limit damages where original and reexamined claims are “substantially identical” in scope

Convolve, Inc. v. Compaq Computer Corp., No. 2014-1732 (Fed. Cir. Feb. 10, 2016)

The district court granted summary judgment for alleged infringers on the grounds that their products did not directly infringe because they did not meet certain limitations presented in the asserted claims and that infringement liability was precluded by intervening rights arising from a substantive amendment to the asserted claims after reexamination.  

The patents recited a method for controlling the operation of a data storage device that includes a “user interface” that outputs certain “commands” that were “shaped when issued from the processor.” The Federal Circuit found that the district court erred by treating all asserted claims as having the same scope (specifically, that the claim language implicitly required a singular processor associated with the user interface that issues the commands), because that overlooked the differences among the asserted claims. The Federal Circuit reversed the finding of no infringement as to one set of claims that recited “a processor,” because no clear intent was found in the specification or prosecution history to limit “a” to just a single processor in that set of claims.  

With regards to intervening rights, the Federal Circuit confirmed that a patentee of a patent that survives reexamination is entitled to infringement damages. Damages can be received for the period between the issuance of the original claims and the date of the reexamined claims and only if the original and reexamined claims are “substantially identical.” The court again emphasized that all amendments made during reexamination do not necessarily mean that the scope of the claims would be substantively changed.  

Applying this rule, the court analyzed the original and reexamined claims and found no substantive change. After separately scrutinizing the specification, the prosecution history before reexamination, and the prosecution history of the reexamination, the court found that the addition of the term “seek” to the previously used term of “acoustic noise” did not alter the scope of the claims because the claims were originally limited to seek acoustic noise. Thus, the original and reexamined claims were substantially identical and not changed by the amendment, such that damages were available to the patentee and were not precluded by intervening rights.

A copy of the opinion can be found here.