WHEN THE COMPLEXITIES INHERENT IN THE ENGLISH LANGUAGE MEET THE PECULIARITIES OF PATENT JARGON, THE RESULT CAN BE THE BANE OF MANY UNSUSPECTING PATENT

Predicate Logic, Inc., v. Distributive Software, Inc., [2007-1539] (October 9, 2008) [LINN, Newman, Lourie] The Federal Circuit reversed and remanded summary judgment of invalidity for impermissible broadening of the claims during reexamination.
DISCUSSION: The district court held that amendment from “said at least one index” to “at least one said index” impermissibly broadened the scope of claim 1. The district court further found that an amendment deleting the “instantiating” step and replacing it with two steps—“first instantiating” and “second instantiating”—substantively changed the claim by narrowing it. Whether amendments made during reexamination enlarge the scope of a claim is a matter of claim construction, which is reviewed de novo. The Federal Circuit said that in analyzing the breadth of the claim before and after amendment, the district court was correct to ask whether any conceivable process would infringe the amended claim, but not infringe the original claim. A reissue claim that is broader in any respect is considered to be broader than the original claims even though it may be narrower in other respects. However, the Federal Circuit found that the district court’s analysis was flawed, and that the district court’s hypothetical process infringed both the original and the reexamined claim.
Although reversing the district court on the issue of whether the claims were impermissible broadened disposed of the appeal, the Federal Circuit also addressed whether the amendment to the instantiating step was a substantive change, because it affected intervening rights. The Federal Circuit noted that “Identical’ for purposes of intervening rights does not mean verbatim, but means at most without substantive change. . . . An amendment that clarifies the text of the claim or makes it more definite without affecting its scope is generally viewed as identical. The Federal Circuit concluded that the amendment of the “instantiating” step to the “first instantiating” and “second instantiating” steps did not result in a substantive change to claim 1 of the ’798 patent, and thus the original and amended claims are “identical” for purposes of § 252 and, correspondingly, § 307.
QUOTE: “When the complexities inherent in the English language meet the peculiarities of patent jargon, the result can be the bane of many unsuspecting patentees.”