Mere Arguments in / Reexam Do Not Create / Intervening Rights

Marine Polymer Technologies, Inc. v. Hemcon, Inc., [2010-1548] (March 15, 2012) [LOURIE] The Federal Circuit en banc affirmed judgment of the district court by an equally divided court, vacating an earlier panel decision that reversed the decision finding intervening rights were created by the patentee's arguments during reexamination.
DISCUSSION: The Federal Circuit held that the reexamination statute only provides for intervening rights when claims are amended, and not as a result of patentee's argument. In so doing the Federal Circuit applied to Canons of claim construction, the first, that use of the phrase "the invention" has a limiting effect on the scope of the claims, and second that claim differentiation is note a hard and fast rule. In addressing the intervening rights question, the Federal Circuit explained that "under §307(b), the first question when assessing whether intervening rights arose form a 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 §252."