Predicate Logic v. Distributive Software (CAFC 2007-1539)

When the complexities inherent in the English language meet the peculiarities of patent jargon, the result can be the bane of many unsuspecting patentees. While claim language is generally the product of the patentee alone, the patentee's drafting efforts are sometimes aided by the examiner. Usually, such collaborative efforts are constructive. On occasion, however, these efforts result in confusion, not clarity. In this case, there were two such occasions. The first was during the original prosecution--when the patentee authored and the examiner allowed a claim with an arguably ambiguous limitation. The second was during reexamination--when the patentee and the examiner clarified the claim but failed to make an adequate record explaining the rationale for the amendment. Careful and straightforward claim drafting by prosecuting attorneys and agents, and rigorous application by examiners of the statutory standard to particularly point out and distinctly claim the subject matter regarded to be the invention, see 35 U.S.C. § 112, ¶ 2 (2000), serve an important public notice function. Here, the public notice function was not well served. Indeed, the controversy in this case might have been avoided had the claims been presented differently and accepted by the examiner only after more careful scrutiny.

The CAFC whimpers about claim language: "the controversy in this case might have been avoided had the claims been presented differently...," yet, the howl rings hollow, as the court had no problem with construction. (District courts misconstrue claims almost as often as they get it right, so that provides no reliable metric.)

Further complaint without cause: "the patentee and the examiner clarified the claim but failed to make an adequate record explaining the rationale for the amendment." What statute, or even code of federal regulation (CFR), requires a patentee, or an examiner, to explain the rationale for claim amendment?

The appeals court points an accusing finger at the English language, when the problem is with patent law.

Why should reexamined claims be so confined, or, more especially, be subject to such trepid reconstruction during enforcement? Unlike reissue, which is voluntary, ex parte reexamination should allow the applicant to amend claims without fear that later claim construction will invalidate the patent. Otherwise, reexamination, which is possible only over reconsideration of prior art, introduces an entirely new, and practically unknowable, jeopardy, namely, a different construction by the courts than understood by the examiner and the applicant. This case goes to precisely that situation. A badly stacked deck against the patentee, and simply inequitable.

Predicate had amended "said at least one index" to "at least one said index." The district court, through elaborate but flawed analysis, considered the amendment broadening.

Under 35 U.S.C. § 305, "[n]o proposed amended or new claim enlarging the scope of a claim of the patent will be permitted in a reexamination proceeding." Claims that are impermissibly broadened during reexamination are invalid, and "a violation of 35 U.S.C. § 305 is an invalidity defense in a patent infringement action." Quantum Corp. v. Rodime, PLC, 65 F.3d 1577, 1584 (Fed. Cir. 1995).

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. See Quantum, 65 F.3d at 1582 n.4 ("The test for determining whether a reexamined claim is broader than an original claim under 35 U.S.C. § 305 is the same as that in 35 U.S.C. § 251, last paragraph, for determining whether reissue claims filed more than two years after issuance of the original patent are broader than the original claims."); Medtronic, Inc. v. Guidant Corp., 465 F.3d 1360, 1374 (Fed. Cir. 2006) ("A claim of a reissue application is broader in scope than the original claims if it contains within its scope any conceivable apparatus or process which would not have infringed the original patent. 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." (quoting Hockerson-Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369, 1374 (Fed. Cir. 1999))). But the district court's analysis in considering its hypothetical infringing process was flawed.

The hypothetical process does not demonstrate that the claim was broadened. Moreover, we can imagine no conceivable process--and the parties have identified none--that would infringe the amended claim but would not infringe the original claim. We therefore conclude that the amendment of "said at least one index" to "at least one said index" did not broaden the scope of claim 1.

Another amendment had been altering "instantiating" to "first instantiating" and "second instantiating." The district court hadn't considered that broadening.

Rather, the district court found that the amendment effected a "substantive change" by narrowing the claim. Jan. 25 Op. at 16. Under 35 U.S.C. § 307, a claim that is amended in reexamination has the same effect as a claim that is amended in reissue proceedings under 35 U.S.C. § 252. 35 U.S.C. § 307(b) (2000) ("Any proposed amended or new claim determined to be patentable and incorporated into a patent following a reexamination proceeding will have the same effect as that specified in section 252 of this title for reissued patents on the right of any person who made, purchased, or used within the United States, or imported into the United States, anything patented by such proposed amended or new claim, or who made substantial preparation for the same, prior to issuance of a certificate under the provisions of subsection (a) of this section."). Correspondingly, under 35 U.S.C. § 252, a reissued patent is enforceable against infringing activity that occurred after the issuance of the original patent, "to the extent that its claims are substantially identical" to the claims of the original patent. Thus, "[u]nless a claim granted or confirmed upon reexamination is identical to an original claim, the patent can not be enforced against infringing activity that occurred before issuance of the reexamination certificate." Bloom Eng'g Co., Inc. v. N. Am. Mfg. Co., Inc., 129 F.3d 1247, 1250 (Fed. Cir. 1997). "'Identical' 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 . . . ." Id.

The CAFC didn't consider the change substantive.

Reversed and remanded.