Friday, September 18, 2015

R & L Carriers v. Qualcomm

R+L Carriers, Inc. (“R+L”) brought suit against, inter
alia, Qualcomm, Inc. (“Qualcomm”), asserting infringement
of the claims of U.S. Patent No. 6,401,078 (“the ’078
patent”). While the case was pending, R+L filed for ex
parte reexamination of the ’078 patent. Although the
patent survived, R+L added language to all of the claims
at issue. Because the district court determined that the
new claims were not substantially identical to the initial
claims of the ’078 patent, and because there was no dispute
that Qualcomm ceased its allegedly infringing activity
before the reexamination certificate issued, R+L
stipulated to final judgment, dismissing its infringement
claim against Qualcomm. R+L appeals the district court’s
determination that the amendments made during reexamination
resulted in a substantive change in claim
scope. For the reasons set forth below, we affirm, albeit
on slightly different grounds than those relied upon by the
district court.

As to intervening rights

As an initial matter, we disagree with both Qualcomm
and R+L on the primary premises of their arguments. As
for Qualcomm, we do not agree that claim 1 was substantively
narrowed in reexamination because insertion of the
term “advance” into the claims limited claim 1 to only
computer-generated loading manifests. Qualcomm reads
too much into the term “advance,” which, as discussed
below, was added to the claim for reasons unrelated to the
format for preparing the loading manifests. Speculation
about what R+L was attempting to accomplish vis-à-vis
the N&M reference does not change our view.
Under the statute and our prior case law, it is irrelevant
why an amended claim is narrowed during reexamination,
or even whether the patentee intended to narrow
the claim in a particular way. If the scope of the amended
claim is not “substantially identical” to the scope of the
original claim—based on a normal claim construction
analysis—per § 252, that fact affects intervening rights.
See 35 U.S.C. § 307(b).

The bottom line

Accordingly, we conclude that amended claim 1 is not
“substantially identical” to original claim 1. 35 U.S.C.
§ 252. R+L is, thus, not entitled to infringement damages
prior to issuance of the reexamination certificate for the
’078 patent. Since R+L concedes that Qualcomm did not
perform any allegedly infringing conduct after the PTO
issued the reexamination certificate, the district court
properly entered judgment dismissing the case against
For the foregoing reasons, we affirm the judgment of
the district court dismissing R+L’s infringement claims
against Qualcomm.



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