CAFC: Intervening Rights for Claims Unamended During Reexam*
Posted: Tuesday, Sep 27, 2011 @ 9:01 pm | Written by Eric Guttag | No Comments »|
Posted in: Eric Guttag, Federal Circuit, Guest Contributors, IP News, IPWatchdog.com Articles, Patent Fools™, Patent Litigation, Reissue & Reexamination, USPTO
CAFC Rules “Intervening Rights” May Be Based on Arguments Even Though Claims Unamended During Reexamination.
I like writing about esoteric patent law topics and the question of “intervening rights” in reexaminations/reissues is one of the more esoteric. See my 1998 JPTOS article entitledIntervening Rights: A Potential Hidden Trap for Reexamined Patent. The case of Marine Polymer Technologies, Inc. v. HemCon, Inc. is one of those rare instances in this esoteric area of patent law where the Federal Circuit announced a new “wrinkle” on when “intervening rights” apply in reexamination. Unfortunately, the rule announced by the majority in Marine Polymer Technologies (“intervening rights” apply to unamended claims based on statements made during reexamination) is squarely in conflict with the express language of 35 U.S.C. § 307(b), as Judge Lourie’s dissent vigorously (and more importantly, correctly) points out.
From the shameless commerce division, with at least a mild dose of self promotion, I am here to tell you about some of the intellectual property programs that the Practising Law Institute (PLI) has in store for the Winter 2011 season.
Reissue practice and reissue oaths are plagued by the tortured language of 35 U.S.C. § 251. Having suffered through 3 related reissues myself, I’ve often referred to this language in 35 U.S.C. § 251 as being something “other than English.” An expanded panel of the Patent Office Board of Appeals and Interferences (Board) in 
