An Argument Is Not Enough

Submitted by patentadmin on Tue, 03/20/2012 - 15:08

Talk about a wild ride: Patent owner Marine Polymer Technologies won its patent infringement lawsuit against HemCon, Inc., only to have that decision reversed by the CAFC, and then reinstated (along with a $29.4 million damages award) by the CAFC last week.

Both companies make bandages and wound dressings that help control bleeding caused by trauma or surgery. In 2006, Marine Polymer filed suit against HemCon, accusing its competitor of infringing a patent assigned to it, U.S. Patent No. 6,864,245. The patent covers a preparation of p-GlcNAc, a naturally occurring polysaccharide polymer used for stopping bleeding or hemorrhage.

In April of 2010, a federal jury found in favor of Marine Polymer and awarded $29.4 million in damages. HemCon appealed before the Court of Appeals for the Federal Circuit (CAFC) and attempted to invoke the intervening rights defense because of Marine Polymer's actions during a reexamination of the patent. The CAFC agreed with this defense in September 2011 and reversed the lower court's ruling.

However, the CAFC reconsidered that decision en banc, vacated their ruling from last fall, and affirmed the lower court's ruling (and the $29.4M damages award), because the text of the patent's claims did not change based on Marine Polymer's argument made during the reexamination process. The reexamination resulted in the PTO confirming that the patent's claims were patentable as issued (and thus left unchanged), but broadened in scope. The text of the claims, however, remained the same as before.

That's important because an accused infringer is only allowed to invoke the "intervening rights" defense if the patent owner changes the actual text of the patent claim(s) during a post-grant proceeding.

The CAFC was divided on the intervening rights issue, but a 6-4 majority concluded that if the claims had not actually been amended and aren't new, intervening rights do not apply.

"To be sure, patent applicants' actions and arguments during prosecution, including prosecution in a reexamination proceeding, can affect the proper interpretation and effective scope of their claims," the court noted in its decision. "But in rejecting HemCon's request for intervening rights, we are not here interpreting claims. Rather, we are interpreting a statute that provides for intervening rights following reexamination only as to 'amended or new' claims. The asserted claims of the '245 patent are neither."

The case is Marine Polymer Techs., Inc. v. HemCon, Inc., 659 F.3d 1084 (Fed. Cir. 2011), vacated, 2012 U.S. App. LEXIS 1155 (Fed. Cir. Jan. 20, 2012).

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