Time for an InterventionMarine Polymer Technologies, Inc. v. Hemcon, Inc. , No. 2010–1548 (Fed. Cir. Mar. 15, 2012) (en banc)

We first wrote about this case last year. The issue is a pretty narrow one: if a patent owner doesn’t have to literally amend its claims during a reexamination, can that still create intervening rights? That is, can argument alone substantially change the scope of the claims?

The decision itself is a bit confusing, because the court split closely. I’ll explain the result.

Scoping It Out

As I wrote in my original blog post on the case, the big issue is the definition of the term “biocompatibility.” Marine Polymer has a patent covering a polymer for accelerating hemostasis (the stopping of blood flow). The claims require that the polymer be “biocompatible.” There are several tests to determine biocompatibility. Everyone agrees that the claims include polymers that show zero reactivity on those biocompatibility tests. The issue is whether the term also includes polymers that show a low level of reactivity on the tests.

Hemcon argued for a broader construction, because it believed that a broader claim would be invalid. Marine Polymer wanted the narrower meaning (that is, only polymers that show zero reactivity); the district court adopted the narrower meaning. It found that Hemcon infringed the narrower claim, and the USPTO confirmed the patentability of that narrower claim on reexamination.

The patent had independent claims that used the term “biocompatibility” and some dependent claims that defined biocompatibility to include some level of reactivity. A dependent claim normally has to be narrower than the claim it depends from, so this drafting technique seems to imply that biocompatibility should have the broader meaning. This was Hemcon’s argument, and it’s what the original Federal Circuit panel decided. It was also the PTO’s reasoning in rejecting the reexamined claims originally.

Marine Polymer dealt with the reexam by cancelling those inconsistent dependent claims. It then argued that biocompatibility means what the district court said. The examiner agreed and issued a reexamination certificate confirming the independent claims. If the original panel was right about the meaning of “biocompatibility” in the original claims, then the new, more limited claims that emerged from reexam have a substantially different scope. That could create intervening rights, potentially allowing Hemcon to escape damages for infringement. Whether there are intervening rights would depend on how one interprets the statute that grants intervening rights. (More on that shortly.) If the district court was right about the meaning of “biocompatibility,” the reexamination didn’t change anything so there can’t be any intervening rights.

A Close Call

Now we get to the en banc decision.

The court split 5–5 on the issue of the correct construction of “biocompatibility.” The court vacated the original panel decision when it took the case en banc, which means that the district court decision is affirmed. So there are no intervening rights—and HemCon’s on the hook for damages.

Except that 6 members of the court decided that the intervening rights question was important enough that they needed to address it anyway. The issue is whether what Marine Polymer did creates intervening rights. The statute (35 U.S.C. § 307(b)) says that intervening rights may be created by “[a]ny proposed amended or new claim determined to be patentable and incorporated into a patent following a reexamination proceeding.” Marine Polymer didn’t technically amend the claims — it cancelled some dependent claims and then argued for a narrower construction. But it didn’t actually add any new claims or change any claim language. Does the statute extend to that situation?

The majority said that it didn’t and held that the statute means just what it says. Marine Polymer’s independent claims weren’t literally amended or new, so they couldn’t create intervening rights.

Judge Lourie, who dissented from the original panel decision, wrote the majority opinion.

Judge Dyk, writing in dissent, disagreed with both the claim construction and the intervening rights decision. (Judges Dyk and Gajarsa were in the majority on the original panel; Judge Gajarsa joined Judge Dyk’s dissent.) One interesting issue that he raised is whether the majority should have dealt with the intervening rights question, once the claim construction decision made it unnecessary.

Who was the swing vote? Looks like it was Judge Linn. Judge Linn voted against the narrow construction of “biocompatibility” but with the majority with respect to intervening rights.

Should the court have left the intervening rights issue alone once it affirmed the district court’s claim construction? Was the court right to interpret the statute so narrowly? Let us know what you think.

Photo credit: euthman