We conclude that HemCon has absolute intervening rights with respect to products manufactured before the date of reissue. We remand for a determination of whether HemCon has equitable intervening rights with respect to products manufactured after the date of reissue. As a result, we vacate the injunction and damages award.
There was a different claim construction between the USPTO in re-exam and a district court:
In response, Marine Polymer argued to the PTO that “the [district court’s] interpretation of the term ‘biocompatible’ should be adopted in this reexamination” (i.e., that “biocompatible” should be construed to mean “no detectable biological reactivity”). J.A. 37690. Marine Polymer also cancelled the six original dependent claims that had specifically required an elution test score of one or two (i.e., that explicitly required at least some reactivity). See J.A. 37683. The examiner then approved the claims as amended, noting that “[w]ith the cancellation of the claims which required . . . elution test scores [of] 1 or 2, [he] now agree[d] with the [district] court’s definition of the term biocompatible.” J.A. 39481.
As to timing:
The PTO did not issue its notice of intent to issue the reexamination certificate for the ’245 Patent until No- vember 3, 2010, which was after the district court had entered its final judgment on September 22, 2010.
An interesting legal issue:
HemCon argues that the district court’s finding of in fringement should be reversed because Marine Polymer changed the scope of the ’245 Patent’s claims on reexamination and, therefore, HemCon is entitled to intervening rights. While this issue arose after the district court judgment, Marine Polymer does not contend that we are barred on this appeal from considering the issue, and we conclude that we have the discretion on appeal to consider events as to which judicial notice is appropriate that arise after a judgment.
Under the statute, there are two types of intervening rights: (1) absolute intervening rights, which bar claims for infringement based on specific products that were manufactured before the reissue or reex- amination; and (2) equitable intervening rights, which bar claims for infringement for new products and newly manufactured versions of prior existing products made after the reissue or reexamination. See 35 U.S.C. §§ 252, 307. We think it appropriate to decide the question of absolute intervening rights without remand because it is a pure question of law. However, we conclude that the district court should consider the question of equitable intervening rights in the first instance since fact ques- tions are involved. We consider first the issue of absolute intervening rights as a defense.
Essentially, “the making of substantive changes in the claims [on reexamination] is treated as an irrebuttable presumption that the original claims were materially flawed.” Bloom Eng’g Co. v. N. Am. Mfg. Co., 129 F.3d 1247, 1249 (Fed. Cir. 1997). Therefore, if we conclude that the scope of asserted claims of the ’245 Patent was substantively changed on reexamination, HemCon is entitled to absolute intervening rights, and we must reverse the district court’s judgment of infringement.
A key point:
Marine Polymer argues that HemCon is not entitled to intervening rights for several reasons. First, it argues that the doctrine of intervening rights cannot apply here because the actual language of the asserted claims of the ’245 Patent was not amended on reexamination. However, as noted above, the critical question is “whether the scope of the claims” has been changed and “not merely whether different words are used.” Laitram Corp., 163 F.3d at 1346. Although we have not directly addressed whether arguments made to the PTO during reexamination can amend the scope of claims for purposes of the intervening rights doctrine, we have consistently held that arguments made to the PTO on reexamination can create an estoppel or disavowal and thereby change the scope of claims even when the language of the claims did not change.
In Cole v. Kimberly-Clark Corp., 102 F.3d 524, 532 (Fed. Cir. 1996), we held that a patentee surrendered any claim to disposable briefs for children with “ultrasonic bonded seams” when she made statements on reexamina- tion distinguishing her patent claiming disposable briefs from those disclosing bonded seams. Id.