In R+L Carriers, Inc. v. Qualcomm, Inc., the Federal Circuit affirmed the district court’s dismissal of R+L’s infringement claims against Qualcomm, finding that the claims issued after reexamination were not “substantially identical” to the original claims. Considering the claim language at issue and the court’s comments, this decision suggests that almost any reexamination amendments could be found to be narrowing if the examiner cites them as supporting allowance.
The patent at issue was R+L’s U.S. Patent No. 6,401,078, directed to an improved method of consolidating freight into trailers to optimize delivery efficiencies of the loads in each trailer. The patent issued on June 4, 2002, with a single claim:
While R+L’s infringement suit against Qualcomm was pending, R+L sought ex parte reexamination of the ’078 patent based on prior art identified by a third party. The reexamination certificate issued with the following amendments to the preamble and final clause:
Qualcomm had ceased its allegedly infringing activity before the reexamination certificate issued. Thus, it only could be liable for infringement if the claims granted after reexamination were “substantially identical” to the original claims. The district court determined that they were not. The Federal Circuit affirmed, but focused on different claim language.
As discussed by the Federal Circuit, 35 U.S.C. § 252 governs infringement damages associated with reexamined patent claims:
A patentee of a patent that survives reexamination is only entitled to infringement damages for the time period between the date of issuance of the original claims and the date of issuance of the reexamined claims if the original and the reexamined claims are “substantially identical.”
Thus, if the original claims are substantively changed during reexamination–regardless of why or whether the patentee intended to narrow the claim–a patentee is not entitled to damages for infringement that occurred before the reexamination certificate was issued.
In the case at hand, the Federal Circuit compared the original and reexamined claim language, and evaluated “whether there was any product or process that would infringe the original claim, but not infringe the amended claim.” Although the district court had focused on the addition of the term “advance,” the Federal Circuit determined that that claim amendment did not alter the scope of the claims (i.e., it was added only to improve clarity). However, the Federal Circuit found that the phrase “document for another transporting vehicle” did substantively change the claim scope:
R+L amended “loading manifest” to claim an “advance loading manifest document for another transporting vehicle.” …. R+L made this amendment after the PTO rejected original claim 1 over various pieces of prior art …. The examiner expressly stated he was allowing amended claim 1 because “the manifest discussed by [the prior art] is a manifest for the current shipping vehicle and not an advance loading manifest document for another transporting vehicle.” …. In other words, the examiner’s focus in allowing the claims was … on the additional limitation that the advance loading manifest be “for another transporting vehicle.”
The Federal Circuit therefore concluded that “amended claim 1 is not ‘substantially identical’ to original claim 1 because original claim 1 encompassed scope that amended claim 1 does not.” Accordingly, R+L was not entitled to damages for the time period prior to issuance of the reexamination certificate.
Although the Federal Circuit applied a “normal claim construction analysis” to conclude the term “advance” did not substantially change the claim scope, the court appears to have given more weight to the examiner’s comments than the claim language itself when it concluded that “for another transporting vehicle” did effect such a change. In particular, the court seems to have relied heavily on the examiner’s comments that he was allowing the claims because of that amendment, and seems to have assumed that the amendment narrowed the claims to distinguish the prior art. But did it?
As shown by the highlight language in original claim 1, the original claim already recited that the loading manifest was for “another transporting vehicle.” Reviewing the clause at issue as a whole, the added phrase regarding “another transport vehicle” seems clarifying at best and redundant at worst:
prior to the package being removed from the transporting vehicle, utilizing said documentation data at said remote processing center to prepare an advance loading manifest document for another transporting vehicle which includes said package for further transport of the package on another transporting vehicle.
While a court might believe that any amendment required by an examiner to overcome a prior art rejection necessarily must be narrowing, examiners frequently suggest amendments that clarify or emphasize features already recited in the claims. While applicants may agree to such amendments to obtain allowance, this case underscores the risks of doing so during a reexamination proceeding.