CAFC Muddle: Deciphering the Marine Polymer En Banc Ruling*

By Eric Guttag
March 19, 2012

In USPTO v. Bilski, U.S. Supreme Court confronted us with a “fuzzy” composite of opinions about the standard for patent-eligibility under 35 U.S.C. § 101.  See Through the Fuzzy Bilski Looking Glass: The Meaning of Patent-Eligible under 35 U.S.C. § 101 where I noted five key “takeaways” from those composite opinions, including what to make of Justice Scalia joining the Opinion of the Court except for Part II B-2 and C-2.  The Federal Circuit is also not immune from composite opinions that make you scratch your head as to what the final ruling is.  See Ariad Pharmaceuticals, Inc. v. Eli Lilly & Company where an en banc ruling by the Federal Circuit on whether there is a separate “written description” requirement under 35 U.S.C. § 112, first paragraph, spawned (in addition to the Opinion of the Court), four additional concurring and dissenting-in-part opinions.  In affirming the judgment of the district court “by an equally divided court,” the recently issued Marine Polymer Technologies, Inc. v. Hemcon, Inc. case requires yet some more figuring about another “muddled” Federal Circuit en banc decision.

The “muddle” that became the en banc decision in Marine Polymer revolved around two primary questions:  (1) the meaning of the claim term “biocompatible”; and (2) when does “intervening rights” apply to reexamined claims?  See CAFC: Intervening Rights for Claims Unamended During Reexam* where I discussed both of these questions in the Federal Circuit panel decision in Marine Polymer.  In the en banc decision, and by a 5 “yea” to 5 “nay” vote (with Judges Moore and O’Malley not taking part), the Federal Circuit deadlocked over the district court’s interpretation of “biocompatible” to mean “low variability, high purity, and no detectable biological reactivity as determined by biological reactivity as determined by biocompatibility tests.”  In jurisprudential parlance, such a “tie vote” means the district court interpretation prevails by default.

Where the en banc decision gets particularly interesting (and adversarial) is with respect to the second question, namely when does “intervening rights” apply to reexamined claims?  By a 6 to 4 vote, (and a reversal of the panel decision), a majority of the en banc Federal Circuit also concluded “as an alternative ground for affirmance” of the district court’s judgment that “intervening rights do not apply to claims that have not been amended and are not new.”  The majority opinion by Judge Lourie (the dissenter in the panel decision) was joined by Chief Judge Rader, and Judges Newman, Bryson, Prost, and Linn (who was one of the 5 “nay” votes on the meaning “biocompatible).  The dissenting opinion on the “intervening rights” question by Judge Dyk (who wrote the majority opinion in the panel decision) was joined by Senior Judge Gajarsa (who also joined the majority opinion in the panel decision), Judge Reyna, and Judge Wallach.

Like the panel decision, the disagreement on the “intervening rights” question came down to whether statements (in conjunction with the cancellation of 6 dependent claims) made by Marine Polymer (the patentee) during reexamination were relevant to this question.  Again, see CAFC: Intervening Rights for Claims Unamended During Reexam* where I summarized the reexamination proceeding in which, as a result of Marine Polymer cancelling those 6 dependent claims, the patent examiner then “agree[d] with the [district] court’s definition of the term biocompatible.”

Hemcon (the accused infringer) argued that cancellation of these 6 dependent claims and the adoption by the patent examiner of the district court’s definition of “biocompatible” effected “a change in the scope of each remaining claim” and that this “perceived substantive change” to the remaining claims triggered “intervening rights” with respect to those claims.  But as Judge Lourie’s opinion states (correctly in my view), Hemcon’s “intervening rights argument must fail because it disregards the plain and unambiguous language of” 35 U.S.C. § 307(b).  As Judge Lourie observed in his opinion (and as I stated in my earlier article on the panel decision), the express language of 35 U.S.C. § 307(b) says “intervening rights” requires that the reexamined claims be “amended or new.”  Statements relative to the unamended claims are just that, statements which might bear on claim scope for infringement purposes, but not for “intervening rights” purposes.  Or as Judge Lourie said in his majority opinion:

[T]he first question when assessing whether intervening rights arose from reexamination is whether the asserted claim is “amended or new”:  if the answer is no, that ends the inquiry.  Only if the claim at issue is new or has been amended may the court proceed to the second step in the analysis and assess the substantive effect of any such change pursuant to [35 U.S.C.] § 252 [, the reissue statute which is referenced by 35 U.S.C. § 307(b)].

Judge Lourie was also unconvinced by Hemcon’s argument that Marine Polymer’s actions during reexamination caused the remaining asserted claims to be effectively “amended” by disavowal or estoppel, “even thought the language of the [asserted] claims was not formally changed.”  As Judge Lourie accurately put it, such an interpretation of 35 U.S.C. § 307(b) “would conflict with the rest of [35 U.S.C.] § 307, for it is difficult to envision how arguments about claim meaning could be ‘incorporated into a patent’ by the Director of the PTO.”  In final response to Hemcon’s concern that “excluding its concept of amendment by argument” from 35 U.S.C. § 307(b) would allow “gamesmanship” on the part of patentees during reexamination, “the fear of gamesmanship does not persuade us to rule contrary to the plain meaning of the statute.”

In contrast to Judge Lourie’s straightforward approach to the “intervening rights” question based on the express language of 35 U.S.C. § 307(b), Judge Dyk’s partially dissenting opinion jumps through a series of “legal hoops” to reach the conclusion that “intervening rights” applies to more than just “amended or new claims.”  (Somewhat surprisingly, Judge Dyk also suggests that the en banc majority thought the issue of “intervening rights” was “not properly before us.”)  First, Judge Dyk’s opinion says that the “majority is incorrect as a matter of statutory interpretation.”  But while Judge Dyk is correct that 35 U.S.C. § 307(b) incorporates the “intervening rights” provisions in the reissue statute (35 U.S.C. § 252), he also reaches the startling conclusion that the “amended or new” language of the reexamination statute should be interpreted the same as the “substantially identical” language in the reissue statute.

What Judge Dyk’s partial dissenting opinion has essentially done is conflate the “amended or new claim” language of the reexamination statute with the “substantially identical” language in the reissue statute.  But as I pointed out in my earlier article on the panel decision (and as Judge Lourie correctly recognized in his majority opinion), the application of “intervening rights” in reexaminations is actually a “two step” process:  (1) you first see if the reexamined claims are “amended or new,” and only if those claims are “amended or new,” do you then (2) determine whether the “amended or new” claims are “substantially identical” to the respective original claims.  As Judge Lourie’s majority opinion also correctly observed, once you determine that asserted claims are not “amended or new” in the first step, there’s no need to proceed to the second step.  All of Judge Dyk’s sound and bluster to the contrary about the “original” and “new” claims not being “substantially identical” is legally irrelevant.

Second, Judge Dyk’s opinion says that “it is well established that statements during prosecution or reexamination of a patent, as well as additions to claims to overcome rejections, can change the meaning of a claim term that would ordinarily be construed be construed otherwise.”  In other words (and similar to his majority panel opinion), Judge Dyk is making an analogy to the doctrines of prosecution history estoppel and disavowal of claim scope, once more citing to the 1996 case of Cole v. Kimberly-Clark Corp. (statements made during reexamination to distinguish prior art effectively narrowed the scope of reexamined claims), as well as the more recent 2011 case of American Piledriving Equipment, Inc. v. Geoquip, Inc. (patentee disclaimed claim scope on reexamination by arguing that certain claims should be allowed over the prior art because the claimed “integral” components were comprised of “one piece.”).  But as I pointed out in my earlier article on the panel decision, Judge Dyk’s analogy to these doctrines is legally flawed, as well as unsupported by the Cole and American Piledriving Equipment cases.

Third, Judge Dyk’s opinion asserts that limiting the term “amended” claim under 35 U.S.C. § 307(b) to “a situation where the language itself is changed” “ignores the statute’s language, its purposes, and the history of intervening rights.”  But Judge Dyk’s long and convoluted explanation for why the term “amended” means something other than what it plainly says in 35 U.S.C. § 307(b) doesn’t stand up under scrutiny.  One particularly curious statement is that “we must interpret ‘amended’ to effectuate the intent of Congress in enacting the intervening rights provisions of the reexamination statutes.”  But what is glaringly “absent” from Judge Dyk’s tome on effecting “the intent of Congress” is any citation or reference to the legislative history accompanying the reexamination statutes.  In fact, his feeble assertion that the reexamination statute doesn’t define the phrase “amended” comes across merely as “grasping at straws,” not logic.

What is obviously bothering Judge Dyk is what was urged by several of the amici in support of Hemcon’s position:  potential “gamesmanship” by patentees during reexamination to make statements (as well as amend/cancel other claims) during reexamination, thus interpretationally altering the scope of the reexamined claims, but without texturally changing those claims.  As I stated in my earlier article on the panel decision, Judge Dyk may wish that the doctrine of “disclaimer of claim scope” should apply so that “intervening rights” might attach to unamended claims by virtue of statements (or other amendments) made during reexamination to prevent such “gamesmanship.”  But as Judge Lourie also correctly said in his majority opinion, “we are interpreting a statute that provides for intervening rights following reexamination only as to ‘amended or new’ claims.”

*© 2012 Eric W. Guttag.  Posted March , 2012 on

The Author

Eric Guttag

Eric Guttag  
Mr. Guttag has over 38 years of corporate and private intellectual property law experience on patent, trademark, copyright, trade secret and unfair competition matters, computer and Internet law, including patent application drafting, prosecution, and patentability studies; infringement and validity studies; international patent prosecution; patent and know-how licensing; consulting, confidentiality, clinical study and research agreements; trademark searches and opinions; trademark registration and prosecution; trademark freedom-to-use studies and trademark litigation and dispute resolution.

Warning & Disclaimer: The pages, articles and comments on do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of Read more.

Discuss this

There are currently 1 Comment comments.

  1. Gene Quinn March 19, 2012 5:20 pm

    Thanks for this article EG!

    It is amazing to me that there are so many Judges on the Federal Circuit who are willing to simply ignore the statute. Clearly, the patent statute does not support intervening rights applying every time an argument is made. If that were the case then every single reexamination would result in intervening rights, which is just absurd on its face. How they could be willing to interpret the statute to create an outcome that is so absurd and so clearly swallows the rule is beyond me.

    It seems to me that there are a number of Judges on the Federal Circuit who would rather legislate. If that is the case they should resign and run for Congress.