Marine Polymer Tech. v. HemCon, Inc., Slip. Op., 2010-1548 (Fed. Cir. Mar. 15, 2012) (en banc)
Last Thursday, the Federal Circuit brought good and bad news to a number of Northwest companies through its en banc opinion in Marine Polymer v. HemCon. The divided Court affirmed a $34.2 million patent-infringement judgment against Portland-based HemCon Medical Technologies, putting HemCon squarely on the bad-news side of things. The opinion is good news, however, for Bellevue, Washington’s Intellectual Ventures (represented by the Portland-based firm of Stoel Rives), who filed an amicus brief supporting Marine Polymer’s position on the issue of intervening rights.
While the implications of the opinion are significant to those directly involved, what does the opinion mean for the rest of us (if anything)?
Background
The facts and procedural history leading up to last week’s opinion are detailed in one of my earlier posts. In short, Marine Polymer did well for itself before the district court and not so well on HemCon’s appeal to the Federal Circuit, where a panel reversed the district court’s judgment of infringement against HemCon. The panel held that HemCon acquired intervening rights during reexamination of the patent-in-suit because Marine Polymer changed the scope of the asserted independent claims by deleting dependent claims. Notably, Marine Polymer did not change the language of any of the independent claims it was asserting in the litigation against HemCon.
Marine Polymer petitioned for rehearing en banc. On January 20, 2012, the Federal Circuit granted the petition and vacated the panel decision—presumably to clear up whether intervening rights can be acquired to an original claim in a post-grant review proceeding where the text of the claim is not altered. In its petition for rehearing en banc, Marine Polymer framed the issue as follows:
Whether arguments made regarding a patent claim during reexamination of a patent give rise to intervening rights under 35 U.S.C., §§ 307(b) and 252, where the patent claim in question is neither “amended” nor “new” in the reexamination.
The Opinion
Although the Court concluded that HemCon did not acquire intervening rights, it did so only by a 6-4 majority and only as an “alternative ground” to affirming the district court on claim construction:
Although we reject the premise of HemCon’s argument regarding intervening rights—that the district court’s claim construction prior to reexamination of the ‘245 patent was erroneous—we conclude, as an alternative ground for decision, that even if the district court’s claim construction was erroneous, HemCon’s intervening rights argument must fail because it disregards the plain and unambiguous language of § 307(b).
Notably, the Court concluded that a claim is not “‘amended’ for purposes of § 307(b) without changing the claim language itself.”
The Court affirmed the district court’s claim construction in a split 5-5 opinion. Judges Moore and O’Malley did not participate, and Judge Lourie wrote the majority opinion. Part I of the majority opinion addresses claim construction, infringement, and damages, and Part II addresses intervening rights. Judges Rader, Newman, Bryson, and Prost joined in both parts, and Judge Linn joined only in Part II. Judge Dyk wrote the dissent and was joined by Judges Gajarsa, Reyna, Wallach, and in part by Judge Linn.
Takeaways
The outcome here is tough for HemCon. I thought HemCon’s argument that Marine Polymer changed the scope of the asserted claims when it deleted dependent claims during reexamination was persuasive, but not enough to overcome the clear language of § 307(b), which unambiguously applies to “amended or new” claims. Patent attorneys know what it means to amend a claim, and HemCon had a difficult argument that it was entitled to intervening rights to claims that were neither new nor textually altered.
One interesting issue is how courts will apply Marine Polymer. Does the portion of the opinion concerning intervening rights have any precedential value, or is it merely dictum as Judge Dyk argued in the dissent? On the one hand, Part II was decided by a 6-4 majority, suggesting that district courts will treat it as binding precedent. On the other hand, one could argue that this portion of the opinion is not binding because (1) it was only an “alternative ground” for affirming the district court’s judgment, and (2) the issue of intervening rights was never before the district court or part of its judgment.
Assuming courts will apply the opinion as binding precedent, Marine Polymer is a relief for patent owners like Intellectual Ventures concerned about expanding the scope of the intervening rights defense to include arguments made during reexamination.