Welcome to Winston & Strawn’s Federal Circuit Patent Decision Summaries. This bulletin provides a short summary of, and links to, the precedential patent cases decided by the Federal Circuit last week. We hope that these summaries are useful in keeping you updated on the Federal Circuit’s patent decisions.

Res judicata does not apply to a claim for patent infringement based on products that were not in existence at the time of an earlier lawsuit between the same parties.

Aspex Eyewear, Inc., et al. v. Marchon Eyewear, Inc., et al., No. 2011-1147 (Fed. Cir. Mar. 14, 2012).

The patent at issue generally claimed primary and secondary eyeglass frames that could be mounted to one another magnetically. The district court granted summary judgment to the alleged infringers, holding that the patentee’s claims for infringement were the same as claims that were, or could have been, brought in earlier actions on the patent in suit, and thus were barred by res judicata.

The patentee sued the alleged infringers on the patent at issue once before. Those cases were ultimately concluded after a jury trial on damages against one alleged infringer, and a settlement agreement with the other alleged infringer. After the trial and settlement agreement, the PTO reexamined the patent and confirmed the patentability of several claims including claims that were asserted in the present case.

The patentee argued that res judicata did not bar its claims because they were based on amended and new patent claims subsequent to the reexamination. The Federal Circuit held that the new claims were not materially different from the claims in the prior suits, and by statute, claims that emerge from a reexamination may not be broader than the original claims. The patentee also argued that it was alleging infringement by products that were not in existence during the previous litigation. The court held that the patentee’s claims on these products were not barred because the legal right to bring them had not arisen before.

The patentee also argued that the District Court erred in granting the alleged infringer’s motion for summary judgment on the basis of the settlement agreement between the parties. The court held that the parties’ decisions to depart from the normal rules of claim preclusion by agreement must be express and since this was not addressed in the settlement agreement, the patentee’s claims were not barred.

A copy of the opinion can be found here. 

Intervening rights may be granted pursuant to 35 U.S.C. §§ 307(b) & 316(b) only when a claim is added or the language of a claim is formally amended during reexamination. Effective changes to the scope of an unamended claim do not meet this standard.

Marine Polymer Techs., Inc. v. HemCon, Inc., No. 2010-1548 (Fed. Cir. Mar. 15, 2012) (en banc).

The patentee alleged infringement of the patent for biocompatible compositions of naturally occurring polysaccharide polymer. The district court narrowly construed the claim term “biocompatible” and granted partial summary judgment to patentee, permanently enjoining future infringement.

During the infringement litigation, the alleged infringer sought ex parte reexamination. The examiner found that several dependent claims conflicted with the district court’s construction of “biocompatible,” adopted a broader construction of the term, and invalidated as obvious all of the patent’s claims. The patent patentee then cancelled the conflicting dependent claims, which prompted the examiner to adopt the district court’s construction and reverse the finding of invalidity. A reexamination certificate confirmed the patentability of the noncancelled claims after the district court entered judgment.

The Federal Circuit panel reversed the district court decision, and held that the alleged infringer had intervening rights because the scope of the claims effectively had been changed during  reexamination. See Marine Polymer Techs., Inc. v. HemCon, Inc., 659 F.3d 1084 (2011). Rehearing the case en banc, the Federal Circuit was equally divided on issues of claim construction and damages, and thereby leaving intact the district court’s judgment on those issues.

A narrow majority held that the alleged infringer was not entitled to intervening rights, after concluding that the plain and unambiguous language of 35 U.S.C. §§ 307(b) & 316(b) provides that intervening rights are only available with respect to “amended or new” claims introduced into reexamined patents.  The claims here contained identical language before and after reexamination, and were therefore not “amended or new” even though their scope may effectively have been changed.

In the dissenters’ view, the changed scope of the claims here should have given rise to intervening rights because, the history and purpose of the intervening rights doctrine is undermined if changes in scope unaccompanied by literal changes in claim language cannot give rise to intervening rights.